Wells Fargo & Company v. DSS, LLC / Daniel Drazner
Claim Number: FA1010001352956
Complainant is Wells Fargo & Company (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is DSS, LLC / Daniel Drazner (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <welllfargo.com>, registered with eNom, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010; the National Arbitration Forum received payment on October 20, 2010.
On October 19, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <welllfargo.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@welllfargo.com. Also on October 22, 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 November 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <welllfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <welllfargo.com> domain name.
3. Respondent registered and used the <welllfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified financial banking company that provides banking, insurance, investments, mortgages, and consumer finance services. Complainant has been using the WELLS FARGO mark in the banking industry since 1852. Complainant has multiple trademark registrations for its WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187 issued on October 27, 1964.)
Respondent, DSS, LLC / Daniel Drazner, registered the disputed domain <welllfargo.com> name on April 16, 2004. The disputed domain name resolves to a links page displaying a variety of generic links in the banking field. Links include “debt reduction,” “debt consolidation,” “credit cards,” and “credit history.”
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 Complainant has sufficient rights in the mark to pursue this claim. Complainant first used the WELLS FARGO mark on March 18, 1952 and later registered it with the USPTO (Reg. No. 779,187 issued on October 27, 1964.) The Panel finds that federal registration meets the rights requirement of Policy ¶ 4(a)(i) therefore establishing Complainant’s rights in the WELLS FARGO mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s WELLS FARGO mark. In this case, the “s” in WELLS FARGO has merely been dropped and an extra “l” has been added to replace it. Such minor variations of a mark fail to distinguish a domain name from the original trademark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). The removal of the space between “Wells” and “Fargo” and the addition of a generic top-level domain are irrelevant. See 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.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).). Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <welllfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
For these reasons the Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <welllfargo.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
The Panel notes a lack of evidence indicating that the Respondent is commonly known by the <welllfargo.com> domain name. Respondent’s WHOIS information does not match the domain name nor has Respondent provided any evidence indicating otherwise. The Panel finds that this evidences a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
The WELLS FARGO mark is being used by the Respondent in the confusingly similar disputed domain name to attract Internet users to the Respondent’s site. Once there, Respondent’s site displays links to Complainant’s competitors, who offer services similar to Complainant. The Panel presumes that Respondent then receives revenue from the clicked or displayed links. Such use, without permission, supports a finding of no bona fide offering of goods or services and no legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002)(finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name). The Panel finds that because Respondent is using a confusingly similar domain name to display links to Complainant’s competitors, and profit from those links, Respondent has neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) is met.
Due to the similarity between the disputed domain name and Complainant’s mark, the Panel finds that Respondent is using the domain to attract Internet users to Respondent’s site and redirect them from Complainant’s own products and services. Internet users seeking the Complainant’s Internet banking site, finding themselves actually at Respondent’s site, are redirected to Complainant’s competitors. The Panel finds this is a disruption of Complainant’s business and an indication of bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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)).
Due to the similarity between the disputed domain name and Complainant’s mark, as well as the similar nature of the services displayed on the Respondent’s site, the Panel finds that Respondent is using the confusingly similar disputed domain name to intentionally attract Internet users. The WELLS FARGO mark is a famous mark in the area of banking and Internet users seeking banking services will seek that mark. Respondent has modeled its domain name in an attempt to gain access to those users. The Panel finds that this practice is presumably used for commercial gain and thus indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <welllfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 24, 2010
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