national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Homi Ya

Claim Number: FA1006001329555

 

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong, of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Homi Ya (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2010.

 

On June 16, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 June 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@wellsfargodealrservices.com, postmaster@wellsfargodealersrevices.com,  postmaster@wellsfargodealerserices.com, postmaster@wellsfargodealerservics.com, postmaster@wellsfargodalerservices.com, postmaster@wellsfargodelerservices.com, postmaster@wellsfargodealerservcies.com, postmaster@wellsfargodeaerservices.com, postmaster@wellsfargodealerervices.com, postmaster@wellsfargodealerservces.com, postmaster@wellsfargodealeservices.com, postmaster@wellsfargodealersrvices.com and postmaster@wellsfargoealerservices.com by e-mail.  Also on June 17, 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 July 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 "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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain name are confusingly similar to Complainant’s WELLS FARGO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names.

 

3.      Respondent registered and used the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Wells Fargo & Company, is a global financial services company with $422 billion in assets and 146,000 employees that serve more than 27 million customers at over 6,000 locations worldwide.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its WELLS FARGO mark (e.g., Reg. No. 779,187 issued Oct. 27, 1964), and numerous trademark registrations with governmental trademark authorities worldwide.

 

Respondent, Homi Ya, registered the disputed domain names on March 28, 2010.  Respondent’s disputed domain names resolve to websites that feature search engines and third-party links to banking and financial services companies in competition with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has submitted sufficient evidence to establish rights in its WELLS FARGO mark under Policy ¶ 4(a)(i), through its trademark registrations with the USPTO (e.g., Reg. No. 779,187 issued Oct. 27, 1964), and other governmental trademark authorities worldwide. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); 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 that the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.  Complainant contends that each disputed domain name contains Complainant’s entire WELLS FARGO mark, without the space between the terms, coupled with a misspelled version of the descriptive term “dealer services,” that describes a branch of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant declares that Respondent does not have rights and legitimate interests in the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show it holds rights and interests in the disputed domain names. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that the Complainant has produced a prima facie case.  Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names.    See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).

 

Complainant contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use its marks.  The WHOIS information does not indicate, and there is no further evidence on record, that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).

 

Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain names because Respondent is diverting Internet users to a generic search engine featuring third-party advertising links to various bank related products and services in competition with Complainant.  Complainant contends that such use does not amount to a bona fide offering of goods or services.  The Panel agrees and finds that Respondent’s use of the disputed domain names to maintain a search engine that features third-party links to Complainant’s competitors is not in connection with 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).  See 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names to redirect Internet users seeking Complainant’s official <wellsfargodealerservices.com> website to Respondent’s website that displays third-party links to banking and financial services websites and businesses in competition with Complainant.  The Panel finds that Respondent’s diversion of Internet users to the competitors of Complainant is evidence of Respondent’s 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).

 

Complainant further argues that Respondent registered and used the disputed domain names in bad faith to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark for financial gain.  Complainant contends that the websites resolving from the disputed domain names all contain search engines with third-party links to providers of merchant services that directly compete with Complainant’s service offerings.  Complainant alleges that Respondent receives compensation in the form of click-through fees from the businesses and websites advertised on Respondent’s websites.  The Panel finds that Respondent registered and used the disputed domain names in order to attract Internet users to its websites where Respondent collects click-through and affiliate fees from the competitors of Complainant that are advertised on Respondent’s websites.  The Panel further finds that such use is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See 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)); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.   

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wellsfargodealrservices.com>, <wellsfargodealersrevices.com>, <wellsfargodealerserices.com>, <wellsfargodealerservics.com>, <wellsfargodalerservices.com>, <wellsfargodelerservices.com>, <wellsfargodealerservcies.com>, <wellsfargodeaerservices.com>, <wellsfargodealerervices.com>, <wellsfargodealerservces.com>, <wellsfargodealeservices.com>, <wellsfargodealersrvices.com> and <wellsfargoealerservices.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  July 15, 2010

 

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