national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Piya Ekanarongpun

Claim Number: FA1110001413540

 

PARTIES

 Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA.  Respondent is Piya Ekanarongpun (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2011; the National Arbitration Forum received payment on November 1, 2011.

 

On October 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 November 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@wellsfargodealerservicescom.com, postmaster@wellsfargofinancialbankcom.com, and postmaster@wellsfargofinancialcardscom.com.  Also on November 9, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a 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 <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names are identical/confusingly similar to Complainant’s WELLS FARGO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names.

 

3.    Respondent registered and used the <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, WELLS FARGO, is a financial services company specializing in the provision of banking, insurance, investment, mortgage, and consumer finance services.  Complainant holds numerous trademark registrations for the WELLS FARGO mark, including registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 779,187 registered October 27, 1964).

 

Respondent, Piya Ekanarongpun, registered the <wellsfargodealerservicescom.com> domain name on October 9, 2010, the <wellsfargofinancialbankcom.com> domain name on September 3, 2009, and the <wellsfargofinancialcardscom.com> domain name on October 7, 2010.  The disputed domain names resolve to pages featuring links to services that directly compete with those provided by Complainant.

 

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’s registration of its WELLS FARGO mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). The fact that Respondent operates in a country other than that in which Complainant holds its registration is irrelevant to Policy ¶ 4(a)(i) analysis.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names are confusingly similar to its WELLS FARGO mark within the meaning of Policy ¶ 4(a)(i).  Each disputed domain name wholly incorporates Complainant’s mark, while adding terms descriptive of Complainant’s business, such as “dealer,” “services,” “financial,” “bank” and “cards.”  Each disputed domain also contains a repetition of the term “com” in the second-level name, which is based on a common typographical error.  Previous panels have held that the addition of terms descriptive of Complainant’s business to Complainant’s mark and the affixation of a generic top-level domain (“gTLD”) like “.com” do not distinguish a disputed domain under Policy ¶ 4(a)(i).  See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The addition of a second “com” also does not distinguish a disputed domain name. See Boarder Properties, Inc. v. Hewitt, FA0206000114618 (Nat. Arb. Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term, in this case BORDERS. Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”).

 

The deletion of the space between the words “WELLS” and “FARGO” in Complainant’s mark and the affixation of the generic top-level domain (“gTLD”) “.com” also do not distinguish the disputed domain names from Complainant’s mark. See 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)). Based on the foregoing, the Panel concludes that the disputed domain names are confusingly similar to its WELLS FARGO mark within the meaning of Policy ¶ 4(a)(i).

 

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

   

Rights or Legitimate Interests

 

Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  Complainant has satisfied its burden in this case, while Respondent has not responded at all.  Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  This Panel elects to examine the record to determine whether such rights or legitimate interests do in fact exist under Policy ¶ 4(c).

 

In contending that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), Complainant also asserts that it has never licensed or authorized Respondent’s use of the names.  The WHOIS information lists the domain name registrant as “Piya Ekanarongpun” for each of the disputed domain names.  The Panel finds no similarity between “Piya Ekanarongpun” and the <wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names.  The Panel therefore concludes that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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).

 

Respondent’s use of the disputed domain names to resolve to pages featuring links to services that directly compete with those provided by Complainant suggests that Respondent’s use of the disputed domain names can not be considered 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).  Past panels have agreed that the use of a confusingly similar domain name to redirect Internet users to a site displaying competing links illustrates a respondent’s lack of rights or legitimate interests in a disputed domain name.  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is 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).”); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 similarly finds that Respondent’s use of the disputed domain names does not constitute 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).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s provision of links to sites offering services that directly compete with those offered by Complainant is evidence of Respondent’s bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).  Respondent’s use of confusingly similar domain names substantially increases the likelihood that consumers will mistakenly visit Respondent’s sites when they had intended to visit Complainant’s.  These misdirected users are then presented with links to services that compete with Complainant’s services.  The substitution of information about Complainant’s for information about Complainant’s competitors indisputably disrupts Complainant’s business.  See 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)); see also 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).  The Panel thus finds that Respondent has registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).

 

Respondent’s registration and use of the disputed domain names also exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  Respondent’s use of confusingly similar domain names demonstrates intent to create confusion as to Complaint’s endorsement of, or affiliation with, Respondent’s sites. Respondent seeks to use this confusion to drive traffic to its site, where it presumably receives click-through fees when its links are accessed.  Thus, Respondent is attempting to generate commercial gain from the confusion it creates.  The Panel finds that this constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See 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); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).   

 

Complainant 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.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).   The Panel finds that Respondent had actual knowledge of Complainant's mark and, therefore, that Respondent has registered and uses the disputed domain name in bad faith 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 wellsfargodealerservicescom.com>, <wellsfargofinancialbankcom.com>, and <wellsfargofinancialcardscom.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 13, 2011

 

 

 

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