Wells Fargo & Company v. baal
Claim Number: FA1307001507685
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is baal (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfaroo.com>, registered with eName Technology Co., 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.
Hon. Karl V. Fink (Ret.), 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. The Complaint was submitted in both English and Chinese.
On July 2, 2013, eName Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <wellsfaroo.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., 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 16, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 5, 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@wellsfaroo.com. Also on July 16, 2013, the Chinese language 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 August 8, 2013, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant contends that it has exclusive rights in the WELLS FARGO trademark and various other marks incorporating the WELLS FARGO mark. Complainant states that it is a diversified financial services company providing banking, insurance, investments, mortgages, credit cards, and consumer financing for more than 27 million customers in over 6,000 locations. Complainant claims to maintain an extensive list of registrations for its WELLS FARGO mark, including those with the USPTO (e.g., Reg. No. 779,187 registered Oct. 27, 1964) and through the Chinese SAIC (e.g., Reg. No. 157,592). Panels have found that the registration of a mark, regardless of the respondent’s location in relation to the country of the mark’s registration, satisfies the required showing of Complainant’s rights in the mark under the Policy. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the disputed domain name is confusingly similar to the WELLS FARGO mark. Complainant notes that the disputed domain name is a simple misspelling of Complainant’s mark, substituting the “g” for an extra “o.” According to Complainant, this minor alteration fails to create a distinguishing characteristic needed to prevent a finding of confusing similarity. Panels have made similar findings previously, concluding that the deviation from a mark by a single letter serves to increase, rather than decrease, the confusing similarity of a domain name. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which 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 Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the mark and deletes the space in the mark, and the Panel finds that these changes are irrelevant. 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 <wellsfaroo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark, for the purposes of Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant states that Respondent does not have any intellectual property rights in the <wellsfaroo.com> domain name and has never been a licensee of Complainant. The Panel notes that the WHOIS record, which previous panels have frequently used to determine whether a respondent is commonly known by a disputed domain name, lists “baal” as the domain name registrant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). The Panel finds that, as a result of Complainant’s claim that Respondent has no permission to use the WELLS FARGO mark, and the conflicting WHOIS information, Respondent is not commonly known by the <wellsfaroo.com> domain name pursuant to Policy ¶ 4(c)(ii) and thus cannot base a claim of rights in such an argument.
In furtherance of its claim that Respondent lacks rights and legitimate interests in the <wellsfaroo.com> domain name, Complainant asserts that the disputed domain name resolves to a website where third-party advertising links are displayed to providers of various competing bank-related products and services are offered. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that the display of competitive links at the resolving website is an indication that the respondent lacked rights and legitimate interests in the domain name. Similarly, the Panel here finds that Respondent’s use of the <wellsfaroo.com> domain name to host hyperlinks leading to Complainant’s competitors is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant has proven this element.
According to Complainant, Respondent registered and is using the <wellsfaroo.com> domain name in bad faith. Complainant notes that the website associated with the <wellsfaroo.com> domain name contains advertising links under the headings “Sponsored Listings” and “Related Searches” that resolve to the web pages for providers of banking and financial services of companies that are direct competitors of Complainant. Complainant argues that Respondent thus clearly chose the domain name to trade off of the good will of Complainant’s famous mark, to gain Internet traffic, and to create consumer confusion for financial gain. Panels have found that hosting competing links on a domain name website creates a likelihood of confusion with the complainant and allows the respondent to take commercial advantage of Internet users’ typographical mistakes, thus demonstrating bad faith on the respondent’s behalf. 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 uses the <wellsfaroo.com> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s registration of the <wellsfaroo.com> domain name is a clear example of typosquatting of the WELLS FARGO mark. According to Complainant, the disputed domain name is nothing more than a derivation of Complainant’s mark and thus demonstrates bad faith. Panels have held that typosquatting is the practice of making minor changes to a mark in a domain name with the intent to take advantage of typos and misspellings of the mark by Internet users. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form). The Panel finds that Respondent’s misspelling of the WELLS FARGO mark by a single letter constitutes typosquatting, and is therefore evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(i).
Lastly, Complainant contends that at the time that Respondent registered the disputed domain name, the WELLS FARGO mark had become distinctive and internationally famous. Complainant argues that, as such, Respondent had constructive, if not actual, knowledge of Complainant’s rights in the <wellsfaroo.com> domain name. While previous panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wellsfaroo.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: August 9, 2013
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