Wells Fargo & Company v. Venta and
Leonard Bogucki a/k/a NA and The data in Bulkregister.com's WHOIS database is p
Claim
Number: FA0302000147305
Complainant is
Wells Fargo & Company, Minneapolis, MN, USA (“Complainant”) represented
by Adam Lindquist Scoville of Faegre & Benson LLP. Respondent
is Leonard Bogucki Venta a/k/a NA and The data in Bulkregister.com’s
WHOIS database is p, Sunder Mahal, Mumbai, INDIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wellfargobank.com> and <wwellsfargo.com>,
registered with Enom, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 28, 2003; the Forum received a hard copy of the
Complaint on March 3, 2003.
On
March 5, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
names <wellfargobank.com> and <wwellsfargo.com> are
registered with Enom, Inc. and that Respondent is the current registrant of the
names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
March 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 27, 2003, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@wellfargobank.com and postmaster@wwellsfargo.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 3, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain names registered by
Respondent, <wellfargobank.com> and <wwellsfargo.com>,
are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent has no rights or legitimate
interests in the <wellfargobank.com> and <wwellsfargo.com>
domain names.
3. Respondent registered and used the <wellfargobank.com>
and <wwellsfargo.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds numerous registrations in the U.S. for the WELLS FARGO mark (e.g. U.S.
Reg. Nos. 779,187; 838,059; 891,203; and 1,131,103). Complainant also holds
trademark registrations in many nations worldwide, including India,
Respondent’s purported domicile (Reg. No. 252,569B). Since 1852, Complainant
has provided banking and financial related goods and services to the public
under the WELLS FARGO mark.
Complainant also
has a presence on the Internet, having registered the <wellsfargo.com>
and <wellsfargobank.com> domain names in 1994 and 2000, respectively. At
these websites Internet users are made aware of Complainant’s services and many
of these services are offered directly to present customers of Complainant.
Due to the
nature of Respondent’s contact information for the <wellfargobank.com>
and <wwellsfargo.com> domain names, some clarification is
required. The WHOIS Administrative Contact, Billing Contact, and Registrant
information for the <wwellsfargo.com> domain name consists of text
that Respondent cut and pasted from Bulkregister.com’s terms of use
(Bulkregister.com is a different Registrar than the one in this dispute).
However, the relevant portion of this domain name’s WHOIS Technical Contact
information lists the same e-mail address listed for the <wellfargobank.com>
domain name, polto@ukr.net. This e-mail address is the primary means of
controlling a domain name and enables a Registrar to authenticate the owner of
a domain name registration. That
polto@ukr.net is listed for both domain names indicates that the same person or
entity registered both domain names.
Both disputed
domain names redirect Internet users to the same webpage, located at
<gotoo.com>; the WHOIS contact information for this domain name
registration also lists its email address as the polto@ukr.net address.
Additionally, Complainant’s correspondence with a third party that paid
referral fees to the disputed domain names indicates that both disputed domain
names are controlled by the same person or entity. As such, the Panel infers
that both domain name registrations are held by the same Respondent in this
dispute.
Respondent
registered the <wellfargobank.com> and <wwellsfargo.com>
domain names on August 8, 2001, and July 27, 2001, respectively. Respondent is
not licensed or authorized to use Complainant’s WELLS FARGO mark for any
purpose.
Originally,
Respondent used the disputed domain names to redirect Internet users to the
<lowermybills.com> domain name, a website that paid referral fees for
Internet traffic that was directed from those domain names. To date, upon
arriving at either of the disputed domain names an Internet user is redirected
to a webpage at <gotoo.com/treasure/finance.htm>. At this point a pop-up
advertisement for an online casino appears, as does another webpage,
<gotoo.com/treasure/finance1.htm>. The <gotoo.com> webpages consist
of links to various third-party webpages and search engines.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 has
established in this proceeding that it has rights in the WELLS FARGO mark
through registration of the mark with the appropriate governmental authorities
worldwide, as well as through widespread and continuous use of the mark in
commerce.
The domain name
registered by Respondent, <wwellsfargo.com>, is confusingly similar to Complainant’s WELLS FARGO mark. For this
domain name, Respondent altered Complainant’s distinctive WELLS FARGO mark by
one letter. Despite this variance, the overall impression of the domain name
retains its association with Complainant’s mark. See Compaq Info.
Techs. Group, L.P. v. Seocho , FA
103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name that
differs by only one letter from a trademark has a greater tendency to be
confusingly similar to the trademark where the trademark is highly
distinctive).
The
second domain name registered by Respondent, <wellfargobank.com>, is also confusingly similar to Complainant’s mark. As with
the <wwellsfargo.com> domain name, Respondent’s one-letter
alteration to the WELLS FARGO mark is inconsequential. Respondent’s addition of
the word “bank” to Complainant’s mark likewise fails to create a domain name
that is distinct from Complainant’s mark. The addition of the word “bank,” a
word that both describes the type of business that Complainant engages in and
is included in its <wellsfargobank.com> domain name, does not alleviate
any confusing similarity. See Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
Accordingly, the
Panel finds that the <wellfargobank.com> and <wwellsfargo.com>
domain names are confusingly
similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).
Complainant has
the burden to show that Respondent lacks rights and legitimate interests in the
disputed domain names. Complainant can successfully meet this burden by
demonstrating that Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted
that Respondent has no rights or legitimate interests in respect of the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”).
Respondent’s infringing <wwellsfargo.com> domain name differs from Complainant’s mark
by one letter. Respondent’s infringing <wellfargobank.com> domain
name follows in the same vein with the addition of the word “bank,” a word
clearly associated with Complainant and its WELLS FARGO mark. Respondent’s use
of these misspellings and variations of Complainant’s distinctive mark to
redirect Internet users to its own website is not a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Encyclopaedia Britannica, Inc. v.
Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not
apply where the domain names are misspellings of Complainant's mark); see
also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO
Jan. 21, 2003) (“Typosquatting, as a means of redirecting consumers against
their will to another site, does not qualify as a bona fide offering of goods
or services, whatever may be the goods or services offered at that site”).
Nowhere in
Respondent’s WHOIS contact information is there evidence that Respondent is
commonly known by the domain names. Considering both this and the fact that
Respondent’s domain names are slight variations of Complainant’s famous and
distinctive mark, the Panel finds that Policy ¶ 4(c)(ii) does not apply to
Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also See Valigene Corp. v. MIC,
FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate
interests in a domain name that was a misspelling of a famous mark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wellfargobank.com> and <wwellsfargo.com> domain names under Policy ¶ 4(a)(ii).
Respondent registered two infringing domain names containing in their
entirety Complainant’s well-known mark, thereby creating a likelihood of
confusion as to affiliation or endorsement of its domain names by Complainant,
the registered holder of the WELLS FARGO mark. Respondent used that likelihood
of confusion for commercial gain, first with its redirection of Internet users
to the <lowermybills.com> domain name, and afterward with its redirection
to the <gotoo.com> web pages, which included pop-up advertisements and
links to websites with referral programs. By using Complainant’s mark to attempt
to attract Internet users for commercial gain, Respondent registered and used
the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See
Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum
Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark, when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel thus
finds that Respondent registered and used the <wellfargobank.com>
and <wwellsfargo.com> domain
names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wellfargobank.com> and <wwellsfargo.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 16, 2003.
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