Wells Fargo & Company v. Registrant Registrant
Claim Number: FA0912001297717
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 <weelsfargo.com>, registered with Moniker.
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 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 7, 2009.
On December 11, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <weelsfargo.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2010 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@weelsfargo.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 19, 2010, 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 <weelsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <weelsfargo.com> domain name.
3. Respondent registered and used the <weelsfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo
& Company, 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, 1984) in connection with financial services, specifically mortgages and
consumer finance.
Respondent registered the <weelsfargo.com> domain name on November 12, 2001. The disputed domain name resolves to a website featuring third-party advertising links to bank related products and services that directly compete with Complainant’s business. The website also features Complainant’s WELLS FARGO mark.
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.
Complainant asserts rights in its WELLS FARGO mark through
its holding of a trademark registration for the WELLS FARGO mark with the USPTO
(e.g., Reg. No. 779,187 issued
October 27, 1964). The Panel finds that
Complainant has established rights in the WELLS FARGO mark under Policy ¶ 4(a)(i) through its trademark registration 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 Renaissance Hotel Holdings, Inc. v.
Renaissance
Complainant argues that
Respondent’s <weelsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark
pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed domain name is confusingly similar to
Complainant’s WELLS FARGO mark because Respondent’s domain name merely misspells
Complainant’s mark by replacing the letter “l” in Complainant’s mark with the
letter “e” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the replacement of the
letter “l” with the letter “e” creates a confusing similarity between the
disputed domain name and Complainant’s mark.
See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441
(WIPO July 13, 2000) (finding that a domain name which differs by only one
letter from a trademark has a greater tendency to be confusingly similar to the
trademark where the trademark is highly distinctive); see also Am. Online, Inc. v.
David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a
famous mark does not diminish the confusingly similar nature between the marks
and the disputed domain names.”). The
Panel also finds that the addition of a gTLD to a registered mark is irrelevant
in distinguishing a disputed domain name and 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
Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. 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 name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See 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.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information does not indicate the registrant is
commonly known by the disputed domain name.
Complainant alleges that there is no information in the record that
indicates Respondent has been commonly known by the disputed domain name as a
business or organization or that the disputed domain name is Respondent’s legal
name. Without evidence to the contrary,
the Panel finds that Respondent is not commonly known by the disputed domain
name 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
Complainant alleges that Respondent is using the disputed domain name to link Internet users seeking Complainant’s website to third-party links to Complainant’s competitors. The Panel finds that this is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Complainant alleges that Respondent’s misspelling of Complainant’s mark in the disputed domain name is an example of typosquatting and attempts to take advantage of Internet users’ mistakes by redirecting them to Respondent’s website. The Panel finds that typosquatting is itself evidence that Respondent lacks rights or legitimate interests 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 Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of
the disputed domain name to link Internet users to websites featuring
third-party links that are in competition with Complainant constitutes a
disruption of Complainant’s business and constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
The Panel finds Respondent’s
use of the disputed domain name and Respondent’s attempt to intentionally attract
Internet users and profit through the receipt of click-through fees by creating
a strong likelihood of confusion with Complainant’s WELLS FARGO mark is
evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v.
Web Master, FA 127717 (Nat.
Arb. Forum Nov. 27, 2002) (“By use of
<yahgo.com> to operate its search engine, a name that infringes upon
Complainant’s mark, Respondent is found to have created circumstances
indicating that Respondent, by using the domain name, has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s website by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the website or of a product or
service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also
As established
previously, Respondent has engaged in the practice of typosquatting by
intentionally misspelling Complainant’s WELLS FARGO mark. The Panel finds typosquatting is itself
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (finding that the respondent engaged in typosquatting, which is
evidence of bad faith registration and use under Policy ¶ 4(a)(iii));
see also Microsoft Corp. v. Domain
Registration
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 <weelsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 2, 2010
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