national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Bolama Technologies Limited / Mr Bolama

Claim Number: FA1105001388344

 

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Bolama Technologies Limited / Mr Bolama (“Respondent”), Mauritius.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vellsfargo.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2011; the National Arbitration Forum received payment on May 12, 2011.

 

On May 11, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <vellsfargo.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@vellsfargo.com.  Also on May 12, 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 June 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <vellsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <vellsfargo.com> domain name.

 

3.    Respondent registered and used the <vellsfargo.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Wells Fargo & Company, is a diversified financial services corporation with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance services.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WELLS FARGO mark (e.g., Reg. No. 1,131,103 issued February 19, 1980).  Additionally, Complainant has operated its official website at the <wellsfargo.com> domain name since 1994.

 

Respondent, Bolama Technologies Limited / Mr Bolama, registered the disputed domain name on October 24, 2008.  The disputed domain name resolves to a website featuring links to providers of various bank related products and services.

 

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

 

Complainant submits evidence of its extensive USPTO trademark registrations for the WELLS FARGO mark (e.g., Reg. No. 1,131,103 issued February 19, 1980).  Although Respondent’s country of residence is Mauritius, the Panel finds that USPTO registrations are still sufficient evidence of Complainant’s rights in the WELLS FARGO 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). 

 

Complainant asserts that Respondent’s <vellsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.  Complainant argues that the disputed domain name is a misspelling of Complainant’s WELLS FARGO mark and merely replaces the letter “w” with the letter “v” along with adding the generic top-level domain (“gTLD”) “.com.”  Complainant suggests that such a de minimus difference between the disputed domain name and the WELLS FARGO mark renders the <vellsfargo.com> domain name confusingly similar to the WELLS FARGO mark under Policy ¶ 4(a)(i).  The Panel agrees.  See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). 

 

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

 

Rights or Legitimate Interests

 

Pursuant to the requirements of Policy ¶ 4(a)(ii), Complainant has established its prima facie case regarding Respondent’s lack of rights and legitimate interests in the disputed domain name, thereby effectively transferring the burden of proof to Respondent, who must now submit affirmative evidence of its rights or legitimate interests in the disputed domain name.  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.”).  Respondent has not submitted any response to the Complaint and therefore has provided no evidence that it has any rights or legitimate interests in the <vellsfargo.com> domain name.  From this the Panel might infer that the allegations contained in the Complaint are true.  See 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 elects to consider the record in its entirety before making a determination as to whether or not Respondent has any rights or legitimate interests in the <vellsfargo.com> domain name under Policy ¶ 4(c).

 

Complainant states that there is no evidence that Respondent has, as a business or other organization, been commonly known by the disputed domain name or that the disputed domain name is Respondent’s legal domain name.  The WHOIS information, which lists the registrant of the disputed domain name as “Bolama Technologies Limited / Mr Bolama,” fails to provide any connection between Respondent and the disputed domain name.  There does not appear to be any evidence anywhere in the record that would indicate that Respondent is commonly known by the <vellsfargo.com> domain name.  Therefore, the Panel concludes that Respondent cannot establish rights or legitimate interests in the disputed domain name 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). 

 

Complainant alleges that Respondent’s disputed domain name resolves to a website featuring third-party links to providers of bank related products and services.  The Panel presumes that Respondent profits in some way each time an Internet user clicks on one of the featured links.  The Panel finds that Respondent’s use of the disputed domain name to display links that compete with Complainant’s business is neither 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that the website associated with the disputed domain name is a landing page with third-party advertising links, a number or which resolve to the web pages of companies that are direct competitors of Complainant.  Complainant further argues that this strongly suggests bad faith.  The Panel agrees with Complainant and finds that Respondent’s registration and use of the <vellsfargo.com> domain name effectively disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Finally, Complainant argues that Respondent’s disputed domain name is registered and used 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 resolving website contains links to providers of banking and financial services directly competing with those offered by Complainant.  Complainant argues that the only reasonable inference is that Respondent chose the confusingly similar disputed domain name to trade on the goodwill of the WELLS FARGO mark to gain traffic by attracting Internet users through the creation of consumer confusion.  As the Panel has already made the presumption that Respondent is likely profiting from its registration and use of the disputed domain name, the Panel concludes that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) is 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 <vellsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  June 7, 2011

 

 

 

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