Wells Fargo & Company v. qi yan / yanqi
Claim Number: FA1404001554337
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is qi yan / yanqi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargo-personal.com>, registered with Bizcn.com, Inc.
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 April 16, 2014; the National Arbitration Forum received payment on April 17, 2014. The Complaint was received in both Chinese and English.
On April 16, 2014, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargo-personal.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 April 28, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 19, 2014 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@wellsfargo-personal.com. Also on April 28, 2014, 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 May 20, 2014, 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 makes the following contentions:
1. Complainant is a diversified financial services company with $422 billion in assets and 281,000 employees. Complainant provides banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations.
2. Complainant owns various registrations for the famous WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit E.
a. E.g., Reg. No.779, 187 registered October 27, 1964).
3. Respondent’s <wellsfargo-personal.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
a. Respondent adds the generic term “personal” and a hyphen, along with the generic top-level domain (“gTLD”) “.com.”
4. Respondent has no rights or legitimate interests in the <wellsfargo-personal.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent has no trademark or intellectual property rights in the disputed domain name and has never been a licensee of Complainant.
b. Respondent has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent’s disputed domain name previously directed Internet users to a website containing an identical copy of Complainant’s official website.
ii. Currently, Respondent’s disputed domain name resolves to an inactive website, however, Complainant alleges that Respondent will again enable the resolving website through a different website host.
5. Respondent registered and is using the <wellsfargo-personal.com> domain name in bad faith.
a. Respondent previously used the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark for financial gain.
b. Respondent’s prior use of the disputed domain name held Respondent out as Complainant, alleging to provide financial services, and collecting sensitive financial information from the unsuspecting public. See Complainant’s Exhibit G. This use of Respondent’s resolving domain name was a duplication of Complainant’s website, used in order to appear as if the website were sponsored by Complainant.
c. Respondent is no longer making an active use of the website resolving from the disputed domain name. See Complainant’s Exhibit I.
d. Respondent had actual notice of Complainant and Complainant’s famous mark when Respondent registered the disputed domain name. Complainant supports this claim by stating that according to the WHOIS information, Respondent’s disputed domain name was registered on February 12, 2014, which occurred many years after Complainant’s registration for the WELLS FARGO mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINBGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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 may be conducted in English.
1. Complainant is a well-known United States company that provides a broad range of financial services.
2. Complainant owns various registrations for the famous WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”), e.g. Reg. No.779,187 registered October 27, 1964).
3. Respondent’s disputed <wellsfargo-personal.com> domain name was registered on February 12, 2014.
4. The domain name was previously used to direct Internet users to a website containing an identical copy of Complainant’s official website , but currently resolves to an inactive website.
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 is a diversified financial services company with $422 billion in assets and 281,000 employees. Complainant states that its company provides banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations. Complainant owns various registrations for the famous WELLS FARGO mark with the USPTO and has provided evidence of such registrations. See Complainant’s Exhibit E (e.g., Reg. No. 779,187 registered October 27, 1964). Complainant further provides a listing of international trademark registrations Complainant has secured. See Complainant’s Exhibit D. Panels have found that, regardless of the location of the parties, the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the WELLS FARGO mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WELLS FARGO mark. Complainant additionally contends that Respondent’s <wellsfargo-personal.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. Complainant points out that Respondent adds the generic term “personal” and a hyphen, along with the gTLD “.com.” The Panel notes that Respondent also removes the space in Complainant’s WELLS FARGO mark. Both Respondent’s deletion of spacing and addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis, according to previous panels. 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)). Further, Respondent’s addition of the word “personal” as well as a hyphen does not differentiate a disputed domain name from a given mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). The Panel thereby concludes that Respondent’s <wellsfargo-personal.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
Complainant has thus made out the first of the three elements that it 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. As 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 WELLS FARGO trademark and to use it in its domain name, making only minor spelling alterations and adding a generic word that does not negate a finding of confusing similarity;
(b) Respondent has then used the domain name to direct Internet users to a website containing an identical copy of Complainant’s official website and more recently to an inactive website;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant asserts that Respondent has no rights or legitimate interests in the <wellsfargo-personal.com> domain name. Complainant explains that Respondent is not commonly known by the disputed domain name. Complainant states that to the extent of its knowledge, Respondent has no trademark or intellectual property rights in the disputed domain name and has never been a licensee of Complainant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that the respondent was not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Therefore, the Panel finds here that Respondent is not commonly known by the <wellsfargo-personal.com> domain name;
(e)Complainant states that Respondent has never made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent’s disputed domain name previously directed Internet users to a website containing an identical copy of Complainant’s official website. See Complainant’s Exhibit G compared with Exhibit H. Complainant asserts that Respondent was previously attempting to pass itself off as Complainant for commercial gain. The Panel notes the panel decision in MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names. Likewise, the Panel here finds that Respondent’s prior use of the <wellsfargo-personal.com> domain name does not indicate that a respondent had rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii);
(f)Currently, Complainant asserts that Respondent’s disputed domain name resolves to an inactive website, however, Complainant alleges that Respondent will again enable the resolving website through a different website host. The Panel notes that Respondent’s <wellsfargo-personal.com> domain name resolves to a website displaying the message, “Server not found.” See Complainant’s Exhibit I. Prior panels have frequently concluded that failing to make an active use of the disputed domain name does not establish rights or legitimate interests in the disputed domain name. See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where the respondent did not provide any documentation on the existence of its alleged company that might show what the company’s business was, or how the company’s years of existence, if it ever existed, might mesh with the complainant’s trademark claims). The Panel concludes that Respondent has no rights or legitimate interests in the <wellsfargo-personal.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii);
(g)Complainant argues that Respondent’s previous use of the <wellsfargo-personal.com> domain name to resolve to a website that was identical to Complainant’s official website was intended to collect confidential and sensitive information from Internet users. Panels have frequently found that using a disputed domain name to resolve to a website that aims to take advantage of the confusion caused by the disputed domain name in order to trick Internet users into disclosing confidential information, indicates a phishing scheme. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds accordingly and concludes that Respondent has no Policy ¶ 4(a)(ii) rights or legitimate interests in the disputed domain name.
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 it 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 <wellsfargo-personal.com> domain name in bad faith. Complainant claims that Respondent previously used the disputed domain name to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark for financial gain. Respondent’s prior use of the disputed domain name held Respondent out as complainant, claiming to provide financial services, and collecting sensitive financial information from the unsuspecting public. See Complainant’s Exhibit G. Complainant asserts that Respondent used the disputed domain name to resolve to a duplication of Complainant’s website in order to appear as if the website were sponsored by Complainant. Panels have previously found bad faith use and registration where a respondent uses a confusingly similar domain name to attract Internet users to a website that causes confusion as to complainant’s affiliation with the disputed domain name, and thus creates revenue for respondent. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The Panel concludes that Respondent’s prior use of the <wellsfargo-personal.com> domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Secondly, Complainant asserts that Respondent is no longer making an active use of the website resolving from the disputed domain name. See Complainant’s Exhibit I. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) the panel concluded that the respondent’s failure to make an active use of the domain name satisfied the requirement of ¶ 4(a)(iii) of the Policy. The Panel finds accordingly and concludes that Respondent is demonstrating bad faith use and registration.
Thirdly, Complainant argues that Respondent’s previous use of the disputed domain name aimed at fraudulently obtaining personal information from Internet users through a phishing scam. The panel notes that Respondent’s disputed domain name previously resolved to a website that appeared to be a duplicated version of Complainant’s official site. Panels have previously concluded that operating a phishing scheme indicates bad faith use and registration. 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). The Panel concludes that Respondent’s prior use of the disputed domain name indicates a bad faith phishing scheme under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that Respondent had actual notice of Complainant and Complainant’s famous mark when Respondent registered the disputed domain name. Complainant supports this claim by stating that according to the WHOIS information, Respondent’s disputed domain name was registered on February 12, 2014, which occurred many years after Complainant’s registration for the WELLS FARGO mark. 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).
Fifthly, 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 the conduct of Respondent since that registration, Respondent registered and used the 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 <wellsfargo-personal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 22, 2014
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