Wells Fargo & Company v. Bridge Port Enterprises Limited
Claim Number: FA0907001271507
Complainant is Wells
Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at
issue are <wellsforgo.com>,
<wellfergo.com>, <wellksfargo.com>, and <wellsfargojob.com>. The
<wellsforgo.com> domain name is registered with Enom, Inc. The <wellfergo.com> domain
name is registered with Big Domain Shop, Inc. The <wellksfargo.com> domain name is registered with registered
with Wild West Domains. The <wellsfargojob.com> domain
name is registered with Go Daddy.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
On
On
On July 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 29, 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@wellsforgo.com, postmaster@wellfergo.com, postmaster@wellksfargo.com, and postmaster@wellsfargojob.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsforgo.com>, <wellfergo.com>, <wellksfargo.com>, and <wellsfargojob.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsforgo.com>, <wellfergo.com>, <wellksfargo.com>, and <wellsfargojob.com> domain names.
3. Respondent registered and used the <wellsforgo.com>, <wellfergo.com>, <wellksfargo.com>, and <wellsfargojob.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified
financial services company providing banking and consumer finance to more than twenty-seven
million customers. Complainant holds numerous registrations of its WELLS
FARGO mark with the United States Patent and Trademark Office (“USPTO”) (i.e.,
Reg. No. 779,187 issued
Respondent registered the <wellsforgo.com> 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.
The Panel finds that Complainant has sufficiently established rights in the WELLS FARGO mark under Policy ¶ 4(a)(i) based on its registrations of the mark with the USPTO and other governmental trademark authorities worldwide. Under the Policy, it is not necessary for Complainant to have registered its WELLS FARGO mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Respondent’s
<wellksfargo.com>, <wellfergo.com>,
and <wellsforgo.com> domain names each contain the distinctive
portion of Complainant’s WELLS FARGO mark with the only alterations being the
substitution or addition of letters, constituting misspellings of Complainant’s
WELLS FARGO mark. The Panel finds that
these modifications fail to sufficiently negate a finding of confusing
similarity under Policy ¶ 4(a)(i). See
Complainant has satisfied Policy ¶ 4(a)(i).
In the beginning, Complainant must make a prima facie
showing that Respondent lacks rights and legitimate interests in the disputed domain names. The
burden then shifts to Respondent and Respondent must establish that it has
rights or legitimate interests in the disputed domain names. The Panel
finds that Complainant has sufficiently made its prima facie showing
under Policy ¶ 4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s <wellksfargo.com>, <wellfergo.com>, and <wellsforgo.com> domain names each resolve to a website displaying click-through advertisement links that further resolve to the websites of Complainant’s competitors in the financial services industry. The Panel presumes that Respondent is profiting through the generation of click-through fees. Therefore, the Panel finds that Respondent has not used the <wellksfargo.com>, <wellfergo.com>, and <wellsforgo.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Respondent’s <wellsfargojob.com> domain name resolves to a blank website. Complainant further contends that Respondent has not made any demonstrable preparations to use the website in connection with any substantive content. Therefore, the Panel finds that Respondent’s failure to make active use of the <wellsfargojob.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Complainant contends that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). The pertinent WHOIS information for each disputed domain name identifies the registrant as “Bridge Port Enterprises Limited,” and the Panel has no other information to rely upon in the record with respect to this element of the Policy. Therefore, the Panel finds that Respondent is not commonly known by the <wellsforgo.com>, <wellfergo.com>, <wellksfargo.com>, or <wellsfargojob.com> domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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 was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Finally, the Panel finds that Respondent is taking advantage
of common misspellings of Complainant’s WELLS FARGO mark in the <wellsforgo.com>, <wellfergo.com>, and
<wellksfargo.com> domain names. Respondent is using common misspellings of
Complainant’s WELLS FARGO mark to divert Internet users to Respondent’s
website; this practice is commonly referred to as typosquatting. Thus, the Panel finds that Respondent’s
engagement in typosquatting is further evidence that Respondent lacks rights
and legitimate interests in the <wellsforgo.com>, <wellfergo.com>, and
<wellksfargo.com> domain names under Policy ¶ 4(a)(ii). See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
disputed domain names because it “engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com> website but mistakenly misspell Complainant's
mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb.
Forum
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration of four infringing domain names prevents Complainant from reflecting its WELLS FARGO mark on the Internet. Complainant further asserts that such conduct is evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). The Panel agrees and finds that Respondent’s conduct establishes a pattern that constitutes bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(ii). See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”).
Complainant contends that Respondent is using the confusingly
similar <wellsforgo.com>,
<wellfergo.com>, and <wellksfargo.com> domain
names to attract Internet users to websites containing click-through links that
further resolve to the websites of Complainant’s competitors. The Panel finds that Respondent has
misappropriated Complainant’s WELLS FARGO mark to divert Internet users to
competing websites, which likely disrupts Complainant’s business. Therefore, the Panel finds that Respondent
has engaged in bad faith registration and use of the <wellsforgo.com>, <wellfergo.com>, and
<wellksfargo.com> domain names under Policy ¶ 4(b)(iii). See David
Hall Rare Coins v.
The websites resolving from the confusingly similar <wellsforgo.com>, <wellfergo.com>, and <wellksfargo.com> domain names each contain sponsored click-through links to Complainant’s competitors which presumably generate revenue for Respondent. The Panel therefore finds that Respondent’s intent to attract unknowing Internet users to competing websites, while capitalizing on Complainant’s mark, demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Respondent has failed to put forth any evidence of its intent to use the <wellsfargojob.com> domain name. The disputed domain name remains constructively inactive, displaying a blank page on the resolving website. Accordingly, the Panel finds this inactive use of the <wellsfargojob.com> domain name as evidence that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, the Panel finds that Respondent has engaged in
typosquatting because Respondent is taking advantage of common misspellings of
Complainant’s WELLS FARGO mark in the <wellsforgo.com>, <wellfergo.com>, and
<wellksfargo.com> domain names to divert Internet users to
Respondent’s websites. The Panel finds
that Respondent’s engagement in typosquatting with respect to these disputed
domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Microsoft Corp. v.
Domain Registration
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsforgo.com>, <wellfergo.com>, <wellksfargo.com>, and <wellsfargojob.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 12, 2009
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