Wells Fargo & Company v. Tammy Caffey
Claim Number: FA1307001507684
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Tammy Caffey (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfarco.com>, registered with Fabulous.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2013; the National Arbitration Forum received payment on July 2, 2013.
On July 1, 2013, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wellsfarco.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@wellsfarco.com. Also on July 8, 2013, 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 July 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
a) Complainant contends that it has rights in the WELLS FARGO mark, used in connection with financial services. Complainant is the owner of registrations for the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779, 187 registered Oct. 27, 1964).
b) The <wellsfarco.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. The disputed domain name is a misspelling of Complainant’s mark, which replaces the letter “g” with the letter “c.” Further, the disputed domain name adds the generic top-level domain (“gTLD”) “.com.”
c) Respondent does not own any rights or legitimate interests in the <wellsfarco.com> domain name.
a. Respondent is not a licensee of Complainant, and there is no evidence that Respondent has been commonly known by the disputed domain name.
b. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or a legitimate non-commercial use. The disputed domain name directs Internet users to a generic landing page featuring third-party advertising to Complainant’s competitors. See Complainant’s Exhibit F.
d) Respondent registered and is using the disputed domain name in bad faith.
a. Respondent is attempting to attract Internet users and obtain commercial gain by creating a likelihood of confusion with Complainant’s WELLS FARGO mark. The resolving website displays advertising links and search engines which resolve to web pages for providers of banking and financial services in competition with Complainant.
b. At the time Respondent registered the disputed domain name, Respondent had knowledge of Complainant’s mark, which has achieved international fame. Complainant has 27 million customers through over 6,000 locations, $422 billion in assets, and 281,000 employees.
c. Respondent’s conduct constitutes typosquatting by using a common misspelling of Complainant’s mark in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is very prominent in the financial services industry.
2.Complainant is the owner of registrations for the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779, 187 registered Oct. 27, 1964).
3. Respondent registered the <wellsfarco.com> domain name on October 6, 2002.The disputed domain name directs Internet users to a generic landing page
featuring third-party advertising for Complainant’s competitors.
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.
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.).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the WELLS FARGO mark, used in connection with financial services. Complainant is the owner of registrations for the WELLS FARGO mark with the USPTO (e.g., Reg. No. 779, 187 registered Oct. 27, 1964). Therefore, the Panel finds find that Complainant has rights in the WELLS FARGO mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WELLS FARGO mark. Complainant alleges that the <wellsfarco.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. Complainant argues that the disputed domain name is a misspelling of Complainant’s mark, which replaces the letter “g” with the letter “c.” Complainant also notes that the disputed domain name adds the gTLD “.com.” In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that a misspelling of a complainant’s mark, especially one that only differs by one letter, has a greater tendency to be confusingly similar where the trademark is highly distinctive. Thus, the Panel finds that the misspelling of the Complainant’s WELLS FARGO mark does not distinguish the <wellsfarco.com> domain name from Complainant’s mark. See also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling). Additionally, the Panel finds that the addition of a gTLD or alteration to the spacing in the mark are not relevant to Policy ¶ 4(a)(i) analysis. 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)). Therefore, the Panel finds that Respondent’s <wellsfarco.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
Complainant has thus made out the first of the three elements that she must establish.
It is now well established that 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 then 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous WELLS FARGO trademark and to use the identical name in its domain name;
(b) Respondent then used the disputed domain to direct Internet users to a generic landing page featuring third-party advertising for Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent does not own any rights or legitimate interests in the <wellsfarco.com> domain name. Complainant claims Respondent is not a licensee of Complainant, and there is no evidence that Respondent has been commonly known by the disputed domain name. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). Therefore, because Respondent was not authorized by Complainant to use the WELLS FARGO mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <wellsfarco.com> domain name;
(e) Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. The Panel notes that the disputed domain name directs Internet users to a generic landing page featuring third-party advertising to Complainant’s competitors. See Complainant’s Ex. F. Past panels have found that displaying advertisements of a complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that she must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent registered and is using the disputed domain name in bad faith. Complainant claims Respondent is attempting to attract Internet users and obtain commercial gain by creating a likelihood of confusion with Complainant’s WELLS FARGO mark. Complainant states that the resolving website displays advertising links and search engines which resolve to web pages for providers of banking and financial services in competition with Complainant. See Complainant’s Ex. F. Such use of competing advertisements on the website of a confusingly similar domain name has been found to be in bad faith pursuant to Policy ¶ 4(b)(iv). 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). Therefore, the Panel finds that Respondent registered and is using the <wellsfarco.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant alleges that Respondent’s conduct constitutes typosquatting by using a common misspelling of Complainant’s mark in the disputed domain name. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” Therefore, the Panel finds that because Respondent has utilized a common misspelling of Complainant’s mark to capitalize on the errors of Internet users, the Respondent is typosquatting and thus in violation of Policy ¶ 4(a)(iii) regarding bad faith.
Thirdly, Complainant claims that, at the time Respondent registered the disputed domain name, Respondent had knowledge of Complainant’s mark, which has achieved international fame. Complainant has 27 million customers through over 6,000 locations, $422 billion in assets, and 281,000 employees. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WELLS FARGO mark and in view of the conduct that Respondent has engaged in while using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfarco.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 2, 2013
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