Wells Fargo & Company v. Andrew Wolff
Claim Number: FA0910001291221
Complainant is Wells Fargo & Company (“Complainant”), represented by Jennifer
Collins, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellsfargoloanmodification.net>, registered with Godaddy.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.
Terry F. Peppard as Panelist.
Complainant submitted a complaint to the National Arbitration Forum electronically on October 23, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 26, 2009.
On October 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoloanmodification.net> 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 October 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 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@wellsfargoloanmodification.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark (e.g. Reg. No. 779,187, issued October 27, 1964, service mark for banking and trust services, and Reg. No. 1,136,497, issued May 27, 1980, trademark and service mark for investments in mortgages and other real estate interests.
Respondent is not, and has never been, a licensee of Complainant.
Respondent registered the disputed <wellsfargoloanmodification.net> domain name on July 28, 2009.
The disputed domain name resolves to a website that allows Respondent fraudulently to engage in “phishing” to acquire personal information of Internet users who access the disputed domain name seeking Complainant’s services.
Respondent’s <wellsfargoloanmodification.net> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
Respondent does not have any rights or legitimate interests in the domain name <wellsfargoloanmodification.net>.
Respondent registered and uses the <wellsfargoloanmodification.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its WELLS FARGO mark sufficient for purposes of Policy ¶ 4(a)(i) through its holding of trademark registrations for the mark with the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”
Complainant argues that Respondent’s <wellsfargoloanmodification.net> domain name is confusingly
similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i). The domain name is confusingly similar to
Complainant’s WELLS FARGO mark because, in forming the domain name from the
mark, Respondent merely adds the descriptive term “loan modification” and the
generic top level domain name (“gTLD”) “.net”.
The addition of the words “loan modification” enhances the resulting
confusing similarity between the disputed domain name and the Complainant’s
mark because the generic terms have an obvious relationship to Complainant’s
business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001):
CHANEL,
the salient feature of the Domain Names, is identical to a mark in which
Complainant has shown prior rights. The
addition of the generic term, “perfumes” is not a distinguishing feature, and
in this case seems to increase the likelihood of confusion because it is an apt
term for Complainant’s business.
See also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).
Similarly, the addition of a gTLD to a registered mark is irrelevant in distinguishing a disputed domain name from that mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to a complainant’s REEBOK mark because it fully incorporated the mark and merely added a generic top-level domain).
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes out a
prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it has rights to or
legitimate interests in the disputed domain name. See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the
“complainant must first make a prima facie case that [a] 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.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make a prima facie case that a respondent lacks rights and
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to that respondent to show that it does have rights to or
legitimate interests in a domain name).
In the case before us, Complainant has established a prima facie case in support of its
contentions and Respondent has failed to submit a Response to these
proceedings. In these circumstances, we
are entitled to conclude that Respondent has no rights to or legitimate interests
in the contested domain name which are cognizable under the Policy. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint
filed under the Policy allows a presumption that a complainant’s allegations
are true unless clearly contradicted by the evidence). Nevertheless,
we will examine the record to determine if there is in it any basis for
concluding that Respondent has rights to or legitimate interests in the
disputed domain name by reference to the tests set out in Policy ¶ 4(c).
We begin by observing that the pertinent WHOIS information lists the registrant only as “Andrew Wolff.” Moreover, there is no dispute as to Complainant’s allegation that Respondent is not, and has never been, a licensee of Complainant. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We also note that Complainant alleges, and Respondent does not deny, that Respondent employs Complainant’s mark in the website accessed by the disputed domain name fraudulently to acquire personal information of Internet users who access the domain seeking Complainant’s services. This practice, known as “phishing” for personal information, does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under ¶ 4(c) (iii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent practice of using a domain name confusingly similar to Complainant’s WELLS FARGO mark to attract Internet users to its website to “phish” for users’ personal information creates a strong likelihood of confusion with Complainant’s mark. We may safely presume that Respondent profits by using such information for fraudulent purposes. Thus Respondent’s use of the disputed domain name in the manner alleged in the Complaint evidences bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith registration and use of a domain name where the domain is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s illicit commercial gain); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that a respondent had demonstrated bad faith registration and use of a contested domain name where that Respondent attempted to acquire the personal and financial information of Internet users by means of a domain name confusingly similar to a competing mark).
In addition, it appears that Respondent registered the <wellsfargoloanmodification.net> domain name
with at least constructive knowledge of Complainant’s rights in the WELLS FARGO
trademark and service mark by virtue of Complainant’s prior registration of
that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <wellsfargoloanmodification.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 3, 2009
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