national arbitration forum

 

DECISION

 

Wells Fargo & Company v. WhoisGuard c/o WhoisGuard Protected

Claim Number: FA0710001103650

 

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Ryan M. Kaatz, of Faegre & Benson, LLP, 2200 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN 55402.  Respondent is WhoisGuard c/o WhoisGuard Protected (“Respondent”), 8939 Sepulveda Blvd. #110-732, Westchester, CA 90045.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wellsfargoebanking.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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2007.

 

On October 26, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoebanking.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 28, 2007 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@wellsfargoebanking.com by e-mail.

 

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

 

On November 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a financial services company providing banking, insurance, investments, mortgages and consumer finance for more than 27 million customers from more than 6,000 locations. 

 

Complainant has provided financial services and related goods and services to the public under the mark WELLS FARGO since 1852. 

 

Complainant has registered the WELLS FARGO trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 779,187, issued October 27, 1964). 

 

Complainant holds the <wellsfargo.com> domain name, through which it provides many banking services to customers electronically over its website.

 

Respondent has never been authorized by Complainant to use the WELLS FARGO mark.

 

Respondent registered the disputed <wellsfargoebanking.com> domain name on September 1, 2007. 

 

The <wellsfargoebanking.com> domain name currently directs Internet users to a website that is not actively used, but displays a banner reading “Account Suspended.”   

 

The disputed domain name previously resolved to a website used to defraud Complainant’s customers in a “phishing” scheme.

 

Respondent’s <wellsfargoebanking.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.

 

Respondent does not have any rights or legitimate interests in the domain name <wellsfargoebanking.com>.

 

Respondent registered and uses the contested <wellsfargoebanking.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent 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."

 

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 a 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.”

 

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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

 

 

Identical and/or Confusingly Similar

 

Complainant registered the WELLS FARGO mark with the USPTO, and therefore has established rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”

 

Complainant contends that the <wellsfargoebanking.com> domain name is confusingly similar to the WELLS FARGO mark.  Respondent’s addition of the generic term “ebanking” to the registered mark is insufficient to distinguish the disputed domain name from the registered mark because the generic term describes an aspect of Complainant’s business.  In addition, because all domain names are required to have a top-level domain, Respondent’s use of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s registered mark.  Therefore, we conclude that the contested domain name is confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):

 

The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.

 

See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); further see Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the HOYLE mark of a complainant, and that the addition of “casino,” a generic word describing the business in which that complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant claims that Respondent has neither rights to nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain name.  Once Complainant has made out a prima facie showing that Respondent lacks such rights and legitimate interests, the burden shifts to Respondent.   See, for example, Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):

Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.

 

See also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest nonetheless exists).

 

Complainant has met the initial burden of showing that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). And, because Respondent failed to answer the Complaint, we may presume without more that Respondent lacks all rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint made under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).  Nevertheless, we will examine the evidence in the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

We first observe in this connection that Complainant asserts that it has never authorized Respondent to use the WELLS FARGO mark.  Further, the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain name.  Thus, we conclude that Respondent is not commonly known by the <wellsfargoebanking.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply);  see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when that respondent is not known by the mark in question).

 

We also note that there is no dispute that Respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of Complainant.  This fraudulent use, known as “phishing,” demonstrates that Respondent lacks right and legitimate interests in the <wellsfargoebanking.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

Finally under this heading, there is no contest as to Complainant’s allegation to the effect that Respondent is currently not actively using the disputed domain name, inasmuch as the <wellsfargoebanking.com> domain name now resolves to a website that is blank but for a banner reading “Account Suspended.”  There is no indication that Respondent is in preparation to use the disputed domain name 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, we conclude that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in a domain name where there is no proof that a respondent made preparations to use it or one like it in connection with a bona fide offering of goods and services before notice of a domain name dispute, the domain name did not resolve to a website, and that respondent is not commonly known by the domain name); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):

 

[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).

 

The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <wellsfargoebanking.com> domain name, which is confusingly similar to Complainant’s WELLS FARGO mark, is likely to cause confusion among Internet customers searching for Complainant’s goods and services as to its possible affiliation with or endorsement or sponsorship of Respondent’s website.  We may presume that Respondent benefits commercially from this confusion.  We therefore conclude that Respondent’s registration and use of the <wellsfargoebanking.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).  See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because a respondent's purpose in selecting domain names was to cause confusion with a complainant's website and marks, its use of the names was not in connection with a bona fide offering of goods or services or any fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

Additionally, it is undisputed that Respondent has used the <wellsfargoebanking.com> domain name to obtain personal and financial information from Internet customers of Complainant, a tactic known as “phishing.” Such use is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because a respondent used a domain name to redirect Internet users to a website that imitated a complainant’s website fraudulently to acquire personal information from that complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”

 

We have in mind that the evidence is that Respondent is not currently making an active use of the disputed domain name and has made no showing of an intent to use it in future.  However, The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s passive holding of a domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also

Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

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

 

 

 

 

Terry F. Peppard, Panelist

Dated:  December 13, 2007

 

 

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