Wells Fargo & Company v. Acosta Jose Julian
Claim Number: FA1110001413433
Complainant is Wells Fargo & Company (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Acosta Jose Julian (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com>, registered with Dynadot, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 31, 2011.
On October 28, 2011, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@welfago.com, postmaster@wellfagobank.com, postmaster@welllsfarg.com, postmaster@wellsfasgo.com, and postmaster@wellsfragofinancial.com. Also on November 2, 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 November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names.
3. Respondent registered and used the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, provides financial services under its WELLS FARGO mark. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WELLS FARGO mark (e.g., Reg. No. 779,187 registered October 27, 1964).
Respondent, Acosta Jose Julian, registered the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names no earlier than March 20, 2005. All of the disputed domain names resolve to commercial websites that host hyperlinks that resolve to Complainant’s competitors in the banking and financial services industries.
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.
Complainant claims that it has established rights in its WELLS FARGO mark. In support of this claim, Complainant provides its certificates for its trademark registrations with the USPTO for its WELLS FARGO mark (e.g., Reg. No. 779,187 registered October 27, 1964). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels concluded that a USPTO trademark registration was sufficient to establish rights in a mark under Policy ¶ 4(a)(i). In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the panels found that a complainant is not required to register a mark with the trademark authority in the country the respondent resides or operates in. The Panel agrees with this precedent and concludes that Complainant holds Policy ¶ 4(a)(i) rights in its WELLS FARGO mark.
Complainant contends that Respondent’s <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark. Complainant claims that the disputed domain names are common misspellings of Complainant’s mark, by removing letters, adding letters, replacing a letter with a another letter, or transposing letters. The <wellfagobank.com> and <wellsfragofinancial.com> domain names also add the descriptive terms “bank” or “financial.” All of the disputed domain names include the generic top-level domain (“gTLD”) “.com.” Past panels have found that the misspelling of a complainant’s mark does not sufficiently distinguish a disputed domain name from a complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also 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 Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panels also found that the addition of a descriptive term does not remove a disputed domain name from the realm of confusing similarity. Finally, in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels concluded that the addition of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis. Based on this precedent, the Panel holds that Respondent’s <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain names. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names. Complainant asserts that Respondent is not licensed to use Complainant’s WELLS FARGO mark. The WHOIS information lists “Acosta Jose Julian” as the registrant of the disputed domain names. Respondent has not presented any evidence or arguments that would contradict Complainant’s allegations and the evidence in the record. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels found that the lack of a license to use the complainant’s mark, WHOIS information that is not similar to the disputed domain name, and the respondent’s failure to respond are all evidence that the respondent is not commonly known by the disputed domain name. Consequently, this Panel determines that Respondent is not commonly known by the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names for the purposes of Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names all resolve to commercial websites that contain hyperlinks resolving to Complainant’s competitors in the banking and financial services industries. Complainant provides screen shots that support this contention. Complainant argues that Respondent commercially benefits by receiving click-through fees each time an Internet user clicks on one of the hyperlinks. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), the panels found that the use of a disputed domain name to host competing hyperlinks is evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Thus, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain names.
The Panel concludes Policy ¶ 4(a)(ii) is satisfied.
Complainant does not make any allegations under Policy ¶ 4(b)(iii). However, as noted above, Complainant claims that Respondent registered and uses the disputed domain names to host competing hyperlinks. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels found that such a use disrupts a complainant’s business and is evidence of bad faith registration and use. The Panel agrees and holds that Respondent’s registration and use of the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names disrupts Complainant’s business and demonstrates Policy ¶ 4(b)(iii) bad faith registration and use.
Complainant argues that Respondent is attempting to attract Internet users by creating a likelihood of confusion with Complainant’s mark for commercial gain, which is evidence of bad faith registration and use. Complainant asserts that Respondent commercially benefits from the disputed domain names from receiving click-through fees. Complainant contends that Respondent registered the confusingly similar domain names in order to create confusion as to Complainant’s affiliation with the disputed domain names. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), and TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), the panels found that a respondent registered and used a disputed domain name in bad faith if it used a confusingly similar disputed domain name to host competing hyperlinks. Therefore, the Panel concludes that Respondent’s registration and use of the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names was, and is, in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the WELLS FARGO mark. In Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), the panels found that while constructive notice has not been generally held to suffice for a finding of bad faith registration and use, a panel may nonetheless find that a respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights. The Panel therefore finds that Respondent had actual knowledge of Complainant’s rights in the WELLS FARGO mark, based on the confusing similarity of the disputed domain names and the competing hyperlinks, and that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel concludes Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <welfago.com>, <wellfagobank.com>, <welllsfarg.com>, <wellsfasgo.com>, and <wellsfragofinancial.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 1, 2011
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