Wells Fargo & Company v. WP-1 c/o whoisproxy.com Ltd. / On behalf of wellsfargoassist.com owner
Claim Number: FA1201001427069
Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is WP-1 c/o whoisproxy.com Ltd. / On behalf of wellsfargoassist.com owner (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargoassist.com>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2012; the National Arbitration Forum received payment on January 31, 2012.
On January 31, 2012, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <wellsfargoassist.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@wellsfargoassist.com. Also on February 1, 2012, 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 February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargoassist.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoassist.com> domain name.
3. Respondent registered and used the <wellsfargoassist.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified financial services company that provides banking, insurance, investments, mortgages, and consumer finance for its customers. Complainant has registered its WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) numerous times, including the following:
Reg. No. 779,187 registered October 27, 1964;
Reg. No. 1,131,103 registered February 19, 1980;
Reg. No. 1,136,497 registered May 27, 1980;
Reg. No. 1,138,966 registered August 26, 1980;
Reg. No. 1,167,626 registered September 1, 1981;
Reg. No. 1,181,279 registered December 8, 1981;
Reg. No. 1,274,680 registered April 17, 1984; &
Reg. No. 2,555,996 registered April 2, 2002.
Respondent, WP-1 c/o whoisproxy.com Ltd. / On behalf of wellsfargoassist.com owner, registered the <wellsfargoassist.com> domain name on November 1, 2009. The disputed domain name resolves to a website featuring third-party advertising links to providers of various bank-related products and services.
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 provides trademark certificates showing its registrations of its WELLS FARGO mark with the USPTO, including the following:
Reg. No. 779,187 registered October 27, 1964;
Reg. No. 1,131,103 registered February 19, 1980;
Reg. No. 1,136,497 registered May 27, 1980;
Reg. No. 1,138,966 registered August 26, 1980;
Reg. No. 1,167,626 registered September 1, 1981;
Reg. No. 1,181,279 registered December 8, 1981;
Reg. No. 1,274,680 registered April 17, 1984; &
Reg. No. 2,555,996 registered April 2, 2002.
Registration of a mark with the USPTO has long been a proven way to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). E.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). Moreover, it is not necessary for a complainant to have registered the mark in the respondent’s country in order to prove rights in the mark. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Accordingly, the Panel finds that Complainant’s USPTO trademark registration indicates that Complainant has recognized rights in the WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <wellsfargoassist.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. Respondent’s disputed domain name differs from Complainant’s mark only by removing the space between the terms and adding the generic term “assist” and the generic top-level domain (“gTLD”) “.com.” Panels have frequently found generic terms as inconsequential additions that fail to differentiate a disputed domain name from a mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also AOL LLC v. iTech Ent., LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark). Prior cases have also shown that panels disregard added gTLDs and removed spaces and do not view them as distinguishing changes. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore holds that Respondent’s <wellsfargoassist.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark according to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
In attempting to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent and then the burden shifts to Respondent to prove rights and legitimate interests. Although Complainant effectively made its initial case against Respondent, Respondent offered no answer or contentions in Response. As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). Nevertheless, the Panel will continue the analysis according to the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not a licensee of Complainant. Complainant also alleges that there is no evidence that Respondent has been commonly known by the disputed domain name. The WHOIS information for the disputed domain name, however, identifies the registrant as “WP-1 c/o whoisproxy.com Ltd. / On behalf of wellsfargoassist.com owner.” Although this WHOIS information may appear to provide some evidence that Respondent is commonly known by the disputed domain name, the Panel finds that this minor evidence is insufficient to establish that Respondent is commonly known by the disputed domain name without other evidence showing that Respondent was commonly known by the disputed domain name prior to the disputed domain name’s registration. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also QWEST Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant contends that Respondent’s <wellsfargoassist.com> domain name resolves to a generic website filled with third-party pay-per-click advertising links to providers of various bank-related products and services. Examples of some of the displayed links include “Wells Fargo Mortgage,” “Loan Modification,” “Mortgage Assistance,” “Home Equity Loans,” “Home Improvement Loans,” etc. Hosting pay-per-click directories at a website that resolves from a confusingly similar domain name has been found to be inconsistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s mark to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel accordingly concludes that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use as required in Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that the website resolving from the <wellsfargoassist.com> domain name advertises third-party pay-per-click links, a number of which direct consumers to the web pages of competing companies in the financial, loan, and mortgage industries. As these links facilitate competition with Complainant, the disputed domain name disrupts Complainant’s business, which the Panel finds is evidence of bad faith registration and use according to 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).”).
Complainant also alleges that Respondent registered and uses the disputed domain name in bad faith to attract Internet users by creating a likelihood of confusion with Complainant for financial gain. Complainant asserts that the only reasonable inference is that Respondent chose the <wellsfargoassist.com> domain name in order to trade on the goodwill of Complainant’s famous WELLS FARGO mark. The Panel infers that Respondent receives click-through fees from the displayed links on the resolving website. Complainant contends that the attempt to play off Complainant’s mark to create confusion for commercial gain illustrates bad faith pursuant to Policy ¶ 4(b)(iv), and the Panel agrees. See 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); see also Assoc. Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through’ fees.’”).
Complainant asserts that, at the time Respondent registered the <wellsfargoassist.com> domain name, the WELLS FARGO mark was not only distinctive but also internationally famous. As a result, Complainant alleges that Respondent had constructive notice, if not also actual notice, of Complainant’s rights in the mark. The Panel disregards Complainant’s arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes, Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). The Panel agrees with Complainant regarding Respondent’s actual knowledge, however, concluding that Respondent registered the <wellsfargoassist.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of, Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied 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 <wellsfargoassist.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 5, 2012
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