Wells Fargo & Company v. Zhao Liu
Claim Number: FA1106001392922
Complainant is Wells Fargo & Company (“Complainant”), represented by David A. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Zhao Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wfco.info>, registered with GoDaddy.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2011; the National Arbitration Forum received payment on June 13, 2011.
On June 10, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <wfco.info> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.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 June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@wfco.info. Also on June 13, 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.
A timely Response was received and determined to be complete on June 27, 2011.
On June 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a diversified financial services company with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations. WF & Co. has provided financial services and related goods and services to the public under the WELLS FARGO trademark and a family of related marks since 1852. WF & Co. owns the U.S. trademark for the WF & Design mark in connection with various financial services. Complainant owns numerous trademark registrations for its various trademarks throughout the world. WF & Co. registered and has been using the domain name <wf.com> since well before registration of the subject Domain Name, in connection with mobile banking services. The highly distinctive WF Marks are of great and incalculable value to WF & Co. WF & Co. closely controls the use and reproduction of the WF Marks to ensure that all of its customers can rely upon these marks as signifying banking and financial services of the highest quality.
The domain name at issue, <wfco.info> is confusingly similar to Complainant’s WF Marks. On May 26, 2011, the <wfco.info> was registered and used in an effort to deceive Internet users by providing a website nearly identical to Complainant’s online banking login page displaying Complainant’s word and design trademarks, holding Respondent out as “Wells Fargo”, alleging to provide financial services, and collecting sensitive financial information of the unsuspecting public, including login information and account numbers. Soon thereafter, Respondent disabled the website, but continues to hold registration of the domain name. Respondent used the domain in connection with a phishing website.
There is no evidence that Respondent has been known by the domain name.
The creation date of the domain name was April 10, 2011. At the time Respondent registered the Domain name, the WF Marks were not only distinctive, but also internationally famous so as to give constructive, if not actual notice, to Respondent that the registration would violate Complainant’s rights.
B. Respondent
Respondent states that he is an independent domain investor, and bought the domain name at issue only for investing purpose, not in bad faith. Respondent agrees with Complainant that the person from whom Respondent bought the domain name used the domain name for a “phishing scam.” Respondent states that he changed certain codes so that Complainant will no longer be damaged. Respondent contends that the case be dismissed.
1. Complainant owns rights in the WF Mark.
2. The domain name <wfco.info> domain is confusingly similar to Complainant’s WF Mark.
3. Respondent has no rights to or legitimate interests in the <wfco.info> domain name.
4. The disputed domain name was registered and used in bad faith.
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."
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 contends it has established its rights in the WF mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,644,066 registered June 23, 2009). Complainant has established its rights in the WF mark under Policy ¶ 4(a)(i) by registering that mark with the USPTO. See 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.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006); 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 contends that Respondent’s disputed domain name is confusingly similar to its WF mark. Respondent’s domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.info” and the abbreviation for the generic term company “co.” These additions do not sufficiently distinguish the disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4 (a)(i). See 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.”); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nay. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under the Policy).
Complainant has established the requirements under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent offers no evidence to illustrate his rights to or legitimate interests in the domain name other than the bare allegation that he purchased it from another.
Complainant contends that Respondent is not commonly known by the disputed domain name. The registrant of the domain name is “Zhao Liu.” The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name.)
Complainant next argues that Respondent is not engaged in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name currently resolves to a website which is inactive. Respondent admits that the domain name is currently parked. Respondent states that he bought the domain name only for an investing purpose. From this statement, an inference could be drawn that Respondent purchased the domain name for the purpose of selling it to a third party. Whatever the case may be, there is no doubt that Respondent is not using the disputed domain name for an offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006). (Finding non use as demonstrating a violation of the Policy); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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 is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The evidence in this case shows that the disputed domain name was previously used in connection with a phishing website. Use of domain names to operate a phishing website designed to mislead Internet users into providing personal financial information is not a bona fide offering of goods or services under the Policy or a legitimate noncommercial or fair use under the Policy. See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006).
Complainant has established the requirement under Policy 4(a)(ii).
Under Policy ¶ 4(a)(iii), Complainant is required to prove bad faith on the part of Respondent as it relates to the registration and use of the disputed domain name. Complainant claims Respondent’s prior and current use of the disputed domain name provides affirmative evidence of bad faith registration. Complainant alleges that the disputed domain name resolved to a site which was identical to its own commercial website. Complainant further alleges that the purpose of the site was to obtain sensitive personal information from Internet users for its own fraudulent purposes. The evidence clearly shows Complainant to be correct. Respondent’s use of the disputed domain name to resolve to a site which attempts to pass itself off as Complainant’s own site constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts…that soon after the disputed domain was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant…the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”); see also Capital One Fin. Corp, & Capital One Bank v. Howel, FA 289304 (Nat. Arb, Forum Aug. 11, 2004).
The evidence shows that the registration of the disputed domain name was done with Complainant’s mark in mind. Respondent’s website attempted to copy or be as similar as possible to Complainant’s website, by use of Complainant’s mark. That constitutes bad faith registration and use. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
Respondent admits that the person from whom he purchased the disputed domain name used it in bad faith. Respondent contends that he has not used the domain name in bad faith. He has simply parked the domain name. Respondent claims the domain name is no longer subject to a bad faith determination because of his purchase of the domain name.
The documentary evidence presented by Complainant clearly refutes Respondent’s contention. The evidence shows that Respondent registered the domain name at issue on April 10, 2011. The documents further show that the disputed domain name was being used in the exact manner described by Complainant on May 26, 2011, as shown by means of a print out of Respondent’s web page. Clearly, the disputed domain name was being used by Respondent as an improper “phishing” web site well after Respondent’s registration of the domain name. The panel finds that Respondent registered and used the disputed domain name in bad faith. See Capital One. Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004); see also Wells Fargo & Co. v. Mihael, FA 605221 (Nat Arb. Forum Jan. 16, 2006).
The fact that Respondent, after having registered and used the domain in bad faith, later disabled the web site and parked the disputed domain name in no way presents a defense to this proceeding. See Ingersoll-Rand Co. v. Gullly, D2000-0021 (WIPO Mar. 2, 2000) (“If at any time following registration the name is used in bad faith, the fact of bad faith use is established.”); see also Bass Hotels v. Rodgerall, D2000-0568 (WIPO Aug. 7, 2000) (“Moreover, the fact that the offending use of the website ceased sometime prior to the issuance of the Panel’s decision, does not change the fact that the domain name at issue has been registered and is being used in bad faith, since the phrase ‘is being used’ has been interpreted to refer not to a particular point in time, but to any time during the period of time following registration of the domain name at issue.”)
Complainant contends that resolving the disputed domain name to an inactive website constitutes bad faith registration and use by Respondent. Panels have found that failing to make an active use of a disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007); see also 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).
Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wfco.info> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr.
Dated: July 22, 2011
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