national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Chase Rockefeller / Information Web Sites

Claim Number: FA1309001518132

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA.  Respondent is Chase Rockefeller / Information Web Sites (“Respondent”), Kansas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wellsfargoinsurance.us>, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2013; the National Arbitration Forum received a hard copy of the Complaint on September 9, 2013.

 

On September 9, 2013, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoinsurance.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name.  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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On September 12, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, and 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant
    1. Complainant, Wells Fargo & Company, is a diversified financial services company with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations.
    2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark (e.g., Reg. No. 779,187, registered October 27, 1964).
    3. The domain name is confusingly similar to the famous WELLS FARGO trademark as Respondent merely added the generic term “insurance” (plus adding the country-code top-level domain (“ccTLD”) “.us”).
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    Respondent has no trademark or intellectual property rights in the domain name.

                                         ii.    There is no evidence that Respondent has, as a business or other organization, been commonly known by the domain name.

                                        iii.    Respondent has never made any use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name.

                                       iv.    Complainant alleges that Respondent was attempting to fraudulently obtain person information from Internet users through a phishing scam.

    1. Respondent registered and is using the domain name in bad faith.

                                          i.    The domain name is used and registered in bad faith to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark, for financial gain.

                                         ii.    Respondent was attempting to fraudulently obtain personal information from Internet users through a phishing scam.

                                        iii.    At the time Respondent registered the domain name, the WELLS FARGO marks were not only distinctive, but also internationally famous so as to give constructive, if not actual notice, to Respondent that the registration of the domain name at issue would violate Complainant’s rights.

    1. Respondent registered the <wellsfargoinsurance.us> domain name on February 8, 2013.
  1. Respondent has not submitted a Response to this case.

 

FINDINGS

1.    Respondent’s <wellsfargoinsurance.us> domain name is confusingly similar to Complainant’s WELLS FARGO mark.

2.    Respondent does not have any rights or legitimate interests in the  <wellsfargoinsurance.us > domain name.

3.    Respondent registered and used the <wellsfargoinsurance.us > domain name in bad faith.

 

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."

 

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 or 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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precendent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant argues that it is a diversified financial services company with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations. Complainant argues that it is the owner of trademark registrations with the USPTO for the WELLS FARGO mark (e.g., Reg. No. 779,187, registered October 27, 1964). See Exhibit C. The Panel notes that Respondent appears to reside and operate within the United States. Therefore, the Panel determines that Complainant’s registration of the WELLS FARGO mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant contends that Respondent’s <wellsfargoinsurance.us> domain name is confusingly similar to the famous WELLS FARGO trademark as Respondent merely added the generic term “insurance” plus the ccTLD “.us.” The Panel finds that Respondent’s inclusion of a generic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Additionally, the Panel determines that Respondent’s addition of a ccTLD, such as “.us,” is irrelevant to a Policy ¶ 4(a)(i) analysis. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Lastly, the Panel notes that Respondent removes the space in Complainant’s WELLS FARGO mark for its domain name. The Panel holds that Respondent’s removal of spaces does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). 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)). Accordingly, the Panel finds that Respondent’s <wellsfargoinsurance.us> domain name is confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 notes that, in order to demonstrate rights and legitimate interest, Policy ¶ 4(c) provides four elements that a respondent may satisfy: (i) a respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; or (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent has no trademark or intellectual property rights in the domain name. The Panel concludes that no evidence exists on the record to demonstrate that Respondent owns any service marks or trademarks that reflect the <wellsfargoinsurance.us> domain name. Accordingly, the Panel finds that Respondent does not possess rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name).

 

Complainant alleges that there is no evidence that Respondent has, as a business or other organization, been commonly known by the domain name. The Panel observes that the registrant of the <wellsfargoinsurance.us> domain name is listed as “Chase Rockefeller / Information Web Sites” in the WHOS record. See Exhibit B. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Consequently, the Panel concludes that Respondent is not commonly known by the <wellsfargoinsurance.us> domain name under Policy ¶ 4(c)(iii).

 

Complainant asserts that Respondent has never made any use of, or demonstrable preparation to use, the <wellsfargoinsurance.us> domain name or a name corresponding to the domain name. Complainant claims that Respondent’s domain name directs Internet users to a website containing an image of side navigation bar from Complainant’s website at <wfis.wellsfargo.com> including its CYBERSURE, TOGETHER WE’LL GO FAR, and STAGECOACH and HORSES design marks, an advertisement and a message with a link to send a message. See Exhibits G and H. The Panel notes that Respondent appears to be attempting to pass itself off as Complainant. Therefore, the Panel finds that Respondent’s attempt to pass itself off as Complainant does not constitute a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

Complainant alleges that Respondent was attempting to fraudulently obtain person information from Internet users through a phishing scam. Complainant alleges that Respondent may be using the <wellsfargoinsurance.us> domain name to collect sensitive financial information of the unsuspecting public. The Panel observes that Respondent’s disputed domain name links to a website asking for Internet users’ name, phone number, and e-mail address. See Exhibit G. In Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006), the panel held that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(iii). Therefore, the Panel concludes that Respondent’s use of the disputed domain name to phish for person information is not a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.

 

Registration or Use in Bad Faith

 

Complainant argues that Respondent registered and uses the disputed domain name in bad faith. The Panel notes that, while Policy ¶ 4(b) outlines four factors to consider in making a determination of bad faith, the list is not meant to be exhaustive. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As such, the Panel considers the totality of the circumstances to decide on bad faith.

 

Complainant argues that the <wellsfargoinsurance.us> domain name is used and registered in bad faith to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark, for financial gain. Complainant alleges that the website associated with the disputed domain name was registered and is used in an effort to deceive Internet users to providing a website nearly identical to Complainant’s insurance page displaying Complainant’s word and design trademarks, holding Respondent out of “Wells Fargo.” See Exhibits G and H. Therefore, the Panel holds that Respondent has registered and is using the <wellsfargoinsurance.us> domain name in a bad faith attempt to pass off as Complainant under Policy ¶ 4(b)(iii). See  Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).

 

Complainant argues that Respondent was attempting to fraudulently obtain person information from Internet users through a phishing scam. Complainant alleges that Respondent may be using the <wellsfargoinsurance.us> domain name to collect sensitive financial information of the unsuspecting public. The Panel notes that Respondent’s disputed domain name resolves to a webpage asking for Internet users’ name, phone number, and e-mail address. See Exhibit G. Prior panels have held that a respondent’s use of a domain name to phish for Internet users’ personal information evidences bad faith use and registration under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Thus, the Panel determines that Respondent has registered and is using the <wellsfargoinsurance.us> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant asserts that at the time Respondent registered the <wellsfargoinsurance.us> domain name, the WELLS FARGO marks were not only distinctive, but also internationally famous so as to give constructive, if not actual notice, to Respondent that the registration of the domain name at issue would violate Complainant’s rights. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel may find 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 UDRP."); 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).

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wellsfargoinsurance.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  October 17, 2013

 

 

 

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