national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Wellsfargo Bank / Wellsfargo inc / Wellsfargo

Claim Number: FA1104001383843

 

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by David A. Wong of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Wellsfargo Bank / Wellsfargo inc / Wellsfargo (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wellsfargo-ach.com> and <ssl-wellsfargo.com>, registered with OnlineNIC, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2011; the National Arbitration Forum received payment on April 18, 2011.

 

On April 18, 2011, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names.  OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 April 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2011 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@wellsfargo-ach.com and postmaster@ssl-wellsfargo.com.  Also on April 21, 2011, 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 16, 2011, 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 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.

 

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 <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names.

 

3.    Respondent registered and used the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Wells Fargo & Company, is an international financial services provide that currently serves more than twenty-seven million customers through 6,000 locations.  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 October 27, 1964). 

 

Respondent, Wellsfargo Bank / Wellsfargo inc / Wellsfargo, registered the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names on January 24, 2011 and November 13, 2010, respectively.  Respondent’s  <wellsfargo-ach.com> domain name previously resolved to a website that was nearly identical to Complainant’s banking login page that allowed users to enter their account information as if logging into their banking accounts.  Respondent’s <wellsfargo-ach.com> does not currently resolve to an active website.  Further, Respondent’s <ssl-wellsfargo.com> domain name resolves to a website that states: “This Account Has Been Suspended.” 

 

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 established 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 October 27, 1964).  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 contends that Respondent’s <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.  The Panel notes that both domain names contain Complainant’s WELLS FARGO mark, absent the space between the terms, while adding a hyphen and the letter string “ach” or “ssl” and the generic top-level domain (“gTLD”) “.com.”  Therefore, the Panel finds that the domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged Respondent does not have rights or legitimate interests in the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names.  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 names.  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 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).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complaint argues that Respondent is neither commonly known by the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names, nor has Complainant given Respondent permission to use Complainant’s mark.  The WHOIS information identifies “Wellsfargo Bank / Wellsfargo inc / Wellsfargo” as the registrant of the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names, and there is no further evidence on record that Respondent is commonly known by the disputed domain names.  The Panel finds that without evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Complainant contends that Respondent previously used the <wellsfargo-ach.com> domain name to resolve to a website that was nearly identical to Complainant’s banking login page that allowed users to enter their account information as if logging into their banking accounts.  Complainant asserts that such conduct constitutes phishing as Respondent presumably collects Complainant’s customer account numbers and password information.  Further, Complainant argues that such use is definitive proof that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  The Panel agrees and finds that Respondent’s previous use of the disputed domain name is evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007)(there is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant.  This fraudulent use [is] known as ‘phishing’”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking 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)).

 

In addition, Complainant contends that Respondent’s <wellsfargo-ach.com> domain name does not currently resolve to an active website.  Complainant argues that Respondent’s current failure to make an active use of the domain name is also evidence that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  The Panel agrees and finds that Respondent’s non-use of the disputed domain name is further evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy  ¶ 4(c)(iii).”).

 

Further, Complainant argues that Respondent’s <ssl-wellsfargo.com> domain name resolves to a website that states: “This Account Has Been Suspended.”  Complainant contends and presents evidence that Respondent had also previously used this domain name for a phishing scam as well.  The Panel finds that Respondent’s previous use of the domain name as a phishing scam is evidence that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See supra Wells Fargo & Co. v. WhoisGuard, see also supra Allianz of Am. Corp. v. Bond.

 

Lastly, Complainant notes that Respondent is not currently making an active use of the <ssl-wellsfargo.com> domain name.  The Panel finds that Respondent’s current failure to make an active use of the domain name is evidence that Respondent is not using the domain name for 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 supra Pharmacia & Upjohn AB v. Romero; see also supra Hewlett-Packard Co. v. Shemesh.

 

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

 

Registration and Use in Bad Faith

 

The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive.  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith)   Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). 

 

Complainant has presented evidence and arguments to show that Respondent previously used the <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names in a phishing scam to acquire the account numbers and passwords from its customers.  Complainant argues that such prior use of the confusingly similar domain names is evidence that Respondent registered and used the names in bad faith.  The Panel agrees and finds that without evidence suggesting otherwise, Respondent’s presumed previous use of the domain names in a phishing scheme is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).

 

Complainant has also alleged that Respondent is currently not making an active use of either of the domain names at issue.  In circumstances such as these such non-use can be evidence of bad faith in itself.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).  Therefore, the Panel finds that Respondent’s current failure to make an active use of the domain names is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).

 

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 <wellsfargo-ach.com> and <ssl-wellsfargo.com> domain names be TRANSFERRED from Respondent to Complainant.

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  May 18, 2011

 

 

 

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