national arbitration forum

 

DECISION

 

Wells Fargo & Company v. Gold-Domain's Customer / Customer Name

Claim Number: FA1309001520577

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA.  Respondent is Gold-Domain's Customer / Customer Name (“Respondent”), Oregon, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wellsfargotrade.com>, registered with eNom Inc.

 

PANEL

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.

 

Ho Hyun Nahm as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2013; the National Arbitration Forum received payment on September 23, 2013.

 

On September 20, 2013, eNom Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargotrade.com> domain name is registered with eNom Inc. and that Respondent is the current registrant of the name.  eNom Inc. has verified that Respondent is bound by the eNom Inc. 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 September 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@wellsfargotrade.com.  Also on September 24, 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 October 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. 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 simply Complainant’s famous WELLS FARGO trademark followed by a generic term. Respondent has merely added the generic term “trade” (plus adding the generic top-level domain (“gTLD”) “.com”).
    4. Respondent has no rights or legitimate interests in the domain name.

                                          i.    There is no evidence that Respondent has, as a business or other organization, been commonly known by the <wellsfargotrade.com> domain name.

                                         ii.    Respondent’s website resolving from the <wellsfargotrade.com> domain name was used and registered by Respondent in an effort to deceive Internet users by displaying Complainant’s word trademarks and alleging to provide financial services, specifically a high-yield investment program (“HYIP”).

                                        iii.    The website at the disputed domain name was disabled after Complainant’s demand letter and no longer resolves to an active website.

                                       iv.    The domain name is now subject to an offer for sale through the website <hyipseller.com>.

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

                                          i.    The domain name is now for sale for the amount of $150 on the website associated with the domain name <hyipseller.com>.

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

                                        iii.    The website at the <wellsfargotrade.com> domain name was disabled after Complainant’s demand letter and no longer resolves to an active website.

                                       iv.    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.

 

B. Respondent

Respondent failed to submit a response in this proceeding. Respondent registered the disputed domain name on May 21, 2013.

 

FINDINGS

 

Complainant established that it had rights in the mark contained in the disputed domain name.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

 

The disputed domain name is confusingly similar to Complainants protected mark.

 

Respondent registered and used the disputed domain names 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 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.”).

 

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 contends 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 within the United States. Therefore, the Panel finds that Complainant has demonstrated rights in the WELLS FARGO mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Complainant claims that Respondent’s <wellsfargotrade.com> domain name is simply Complainant’s famous WELLS FARGO trademark followed by a generic term. Complainant contends that Respondent has merely added the generic term “trade” to Complainant’s mark. The Panel finds that Respondent’s inclusion of a generic term does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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). Complainant also argues that Respondent added the gTLD “.com” to Complainant’s WELLS FARGO mark in the <wellsfargotrade.com> domain name. Additionally, the Panel notes that Respondent deletes the space in Complainant’s WELLS FARGO mark. The Panel also finds that Respondent’s removal of a space and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. 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)). Consequently, the Panel determines that Respondent’s <wellsfargotrade.com> 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.”).

 

Complainant asserts that there is no evidence that Respondent has, as a business or other organization, been commonly known by the <wellsfargotrade.com> domain name. Complainant argues that Respondent has no trademark or intellectual property rights in the domain name. Complainant contends that Respondent is not and has never been a licensee of Complainant. Complainant claims that the WHOIS information for the disputed domain name lists Respondent as “Gold-Domain’s Customer” and identifies no other connection between Respondent and the disputed domain name. Accordingly, the Panel determines that Respondent is not commonly known by the <wellsfargotrade.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant asserts that Respondent’s website resolving from the <wellsfargotrade.com> domain name was used and registered by Respondent in an effort to deceive Internet users by displaying Complainant’s word trademarks and alleging to provide financial services, specifically a high-yield investment program (“HYIP”). See Exhibit G. Complainant contends that Respondent used the domain name to offer Internet users financial services which directly compete with those offered by Complainant. The Panel holds that Respondent’s past competing use of the <wellsfargotrade.com> domain name demonstrates that Respondent is not using the domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

Complainant contends that the <wellsfargotrade.com> domain name is now subject to an offer for sale through the website <hyipseller.com>. See Exhibit I. The Panel observes that Respondent’s disputed domain name is offered for sale in the amount of $150. Id. The Panel holds that Respondent’s offer of sale to the public demonstrates that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

Registration and Use in Bad Faith

 

Complainant contends that the <wellsfargotrade.com> domain name is now for sale for the amount of $150 on the website associated with the domain name <hyipseller.com>. See Exhibit I. Complainant argues that the $150 list price for the domain name exceeds the average cost of $13.95 for registering a domain name for a one year period with the current registrar of the domain name. In Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000), the panel found that respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. Therefore, the Panel holds that Respondent’s offer to sell the domain name evidences bad faith use and registration under Policy ¶ 4(b)(i).

 

Complainant argues that the <wellsfargotrade.com> domain name has been used and was registered in bad faith to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark, for financial gain. Complainant contends that the website once associated with the domain name irrefutably demonstrates that the <wellsfargotrade.com> domain name was used and registered by Respondent in an effort to deceive Internet users by displaying Complainant’s word trademarks and alleging to provide financial services, specifically a high-yield investment program (“HYIP”). See Exhibit G. Complainant holds that Respondent formerly used the domain name to offer Internet users financial services which directly compete with those offered by Complainant. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to complainant’s mark to redirect users to a website that offered services similar to those offered by complainant. Accordingly, the Panel finds that Respondent has registered and used the <wellsfargotrade.com> domain name in bad faith under Policy ¶ 4(b)(iv).

 

Complainant asserts that at the time Respondent registered the <wellsfargotrade.com> 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 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).

 

 

DECISION

Having  established all three elements required under the ICANN Policy, the Panel concludes that relief is GRANTED.

 

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

 

 

Ho Hyun Nahm, Panelist

Dated:  October 24, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page