Wells Fargo & Company v. Truth LLC
Claim Number: FA1004001321445
Complainant is Wells Fargo & Company (“Complainant”), represented by David
A. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellsfargogold.com>, registered with Wild West Domains.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2010.
On April 28, 2010, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <wellsfargogold.com> domain name is registered with Wild West Domains and that Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 April 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wellsfargogold.com. Also on April 29, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of a Written Notice, as defined in Rule 1. 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 <wellsfargogold.com> domain name is identical to Complainant’s WELLS FARGO GOLD mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargogold.com> domain name.
3. Respondent registered and used the <wellsfargogold.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, provides financial services and related goods and services to the public. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO GOLD mark (e.g., Reg. No. 3,022,147 registered on November 29, 2005).
Respondent registered the disputed <wellsfargogold.com> domain name on February 23, 2010. The disputed domain name currently resolves to a website featuring advertisements and links to third-party websites. The disputed domain name previously resolved to a website that closely resembled Complainant’s website and prominently displayed Complainant’s WELLSF FARGO GOLD mark and logo.
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 the WELLS FARGO GOLD mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,022,147 registered on November 29, 2005). The Panel finds this registration sufficiently establishes Complainant’s rights in the WELLS FARGO GOLD 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 Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues Respondent’s disputed <wellsfargogold.com> domain name is identical to its WELLS FARGO GOLD mark. The disputed domain name incorporates Complainant’s mark in its entirety and then deletes the spaces between the terms of the mark. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. Respondent’s slight alterations do not render its disputed domain name distinct from 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); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <wellsfargogold.com> domain name is identical to Complainant’s WELLS FARGO GOLD mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case showing Respondent lacks rights or legitimate interests in the disputed domain name. The burden then shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel may view Respondent’s failure to submit a Response as evidence of a lack of rights or legitimate interests. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”). Despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <wellsfargogold.com> domain name under Policy ¶ 4(c).
The WHOIS information
does not indicate Respondent is commonly known by the disputed domain
name. Furthermore, Complainant asserts that
it did not give Respondent permission to use its mark in a domain name. Without evidence to the contrary, the Panel
finds Respondent is not commonly known by the <wellsfargogold.com> domain name under Policy ¶4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the
respondent was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the
respondent was not commonly known by the <lilpunk.com> domain name as
there was no evidence in the record showing that the respondent was commonly
known by that domain name, including the WHOIS information as well as the
complainant’s assertion that it did not authorize or license the respondent’s
use of its mark in a domain name).
The disputed domain name currently resolves to a website
featuring advertisements and links to third-party websites. Respondent most likely receives revenue from
this use through pay-per-click fees. The
Panel finds Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶
4(c)(iii). See Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names); see also Jerry Damson, Inc.
v.
Complainant argues that Respondent previously used the disputed domain name in an attempt to deceive Internet users by providing a website that closely resembled Complainant’s official website. A screen shot shows a website that prominently displayed Complainant’s WELLS FARGO GOLD mark and logo. The website also held itself out as “Wells Fargo Gold Company” and alleged to provide financial services. The Panel finds that Respondent attempted to pass itself off as Complainant. Therefore, the Panel finds these efforts provide further evidence that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent used the identical disputed
domain name to attract and deceive Internet users for commercial gain by
creating a likelihood of confusion with Complainant’s mark. As previously discussed, Respondent’s
disputed domain name is identical to Complainant’s mark. Furthermore, Respondent presumably profits
from its use of the disputed domain name through the receipt of pay-per-click
fees. The Panel finds this behavior constitutes bad faith registration and use
under Policy ¶ 4(b)(iv). See Bank
of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(holding that the respondent’s previous use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because the respondent presumably commercially benefited
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v.
This Domain Name My Be For
Furthermore, Complainant argues that Respondent used the <wellsfargogold.com> domain name to
pass itself off as Complainant by imitating Complainant’s official website and
using replications of Complainant’s WELLS FARGO GOLD mark and logo. The Panel finds Respondent’s attempt to pass
itself off as Complainant constitutes bad faith use and registration pursuant
to Policy ¶ 4(a)(iii).
See Am.
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003)
(finding that the disputed domain name was registered and used in bad faith
where the respondent hosted a website that “duplicated Complainant’s mark and
logo, giving every appearance of being associated or affiliated with
Complainant’s business . . . to
perpetrate a fraud upon individual shareholders who respected the goodwill
surrounding the AIG mark”); see also Target
Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum
The Panel finds 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 <wellsfargogold.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 2, 2010
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