Wells Fargo & Company v. Seventh Summit Ventures
Claim Number: FA0304000155463
Complainant is Wells
Fargo & Company, Minneapolis, MN, USA (“Complainant”) represented
by Jodi A. DeSchane, of Faegre & Benson LLP. Respondent is
Seventh Summit Ventures, St. Johns, WEST INDIES (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at
issue are <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>,
<wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>,
and <wellsfsrgo.com>, registered with Tucows, Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on April 24, 2003; the Forum received a hard copy of the
Complaint on April 25, 2003.
On April 24, 2003, Tucows,
Inc. confirmed by e-mail to the Forum that the domain names <wallsfargo.com>,
<wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>,
<wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com>
are registered with Tucows, Inc. and that Respondent is the current registrant
of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows,
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 April 25, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of May 15, 2003 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@wallsfargo.com, postmaster@wellsfagro.com,
postmaster@wellsfargoo.com, postmaster@wellsfarog.com,
postmaster@wellsfatgo.com, postmaster@wellsfrago.com and
postmaster@wellsfsrgo.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On May 22, 2003,
pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s disputed
domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have
any rights or legitimate interests in the disputed domain names.
3. Respondent registered
and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1852, Complainant,
Wells Fargo & Co., has been engaged in providing quality banking, financial
and related goods and services to the public under the WELLS FARGO family of
marks. In the U.S., Complainant holds numerous registrations for the WELLS
FARGO mark, including Reg. Nos.: 779,187; 838,059; 891,203; 1,131,103;
1,136,497; 1,138,966; 1,167,626; 1,181,279; 1,268,820; 1,273,144; 1,274,680;
2,555,997; 2,561,807; and 2,597,836. Complainant’s U.S. Patent and Trademark
Office registrations date back to 1964.
Complainant holds the
domain name registration for <wellsfargo.com> and has been operating a
website at that location since 1994. Complainant’s website informs the public
as well as Complainant’s present and potential customers of the broad array of
services it offers under the WELLS FARGO mark. Complainant provides many of
these services to customers directly via the Internet.
The WELLS FARGO family
of marks is of significant value to Complainant. Complainant closely controls
the use and reproduction of the marks to ensure that Internet users, current
and potential customers can rely upon these marks as signifying Complainant’s
banking and financial services.
Respondent, Seventh
Summit Ventures, registered the seven disputed domain names between
November 17, 2000 and December 26,
2001. Respondent’s domain names resolve to <superinternetdeals.com>,
which is connected to a website that features advertisements for various goods
and services, including financial services. Respondent’s <superinternetdeals.com>
website also contains several pop-up advertisements.
Complainant’s submission
reveals that Respondent has been involved in previous domain name disputes that
involve established marks. See, e.g., Microsoft Corp. and MSNBC Cable LLC v.
Seventh Summit Ventures, D2003-0567 (WIPO Aug. 14, 2002); The NASDAQ
Stock Mkt., Inc. v. Seventh Summit Ventures, D2001-1497 (WIPO Mar. 15,
2002); Delta Corporate Identity, Inc. v. Seventh Summit Ventures, FA
106112 (Nat. Arb. Forum May 6, 2002); and Bank of America v. Seventh Summit
Ventures, FA 133621 (Nat. Arb. Forum Dec. 31, 2002).
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.
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.
Complainant has
established rights in the WELLS FARGO mark through registration and continuous
use of the mark in commerce since 1852.
Respondent’s <wallsfargo.com>,
<wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>,
<wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com>
domain names are confusingly similar to Complainant’s WELLS FARGO mark.
Respondent’s second-level domains infuse grammatical errors and minor
deviations into Complainant’s mark. Regarding <wallsfargo.com>,
Respondent has merely misspelled the “Wells” portion of the mark. Respondent’s <wellsfagro.com>,
<wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>,
<wellsfrago.com>, and <wellsfsrgo.com> domain names
merely misspell the “Fargo” portion of Complainant’s mark. The intentional
misspelling of a famous mark in a domain name does not create a distinct mark,
but is nevertheless confusingly similar to Complainant’s mark. See Dow Jones
& Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth “w” or the omission of periods or other such generic typos
do not change Respondent’s infringement on a core trademark held by
Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat.
Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Accordingly, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to
submit a Response in this proceeding. Therefore, Complainant’s submission has
gone unopposed and the arguments unrefuted. In the absence of a Response, the
Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Further, because Respondent has
failed to submit a Response, Respondent has failed to propose any set of
circumstances that could substantiate its rights or legitimate interests in the
disputed domain names. See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is not using
the subject domain names in connection with a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate
noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).
Uncontested evidence reveals that Respondent’s domain names redirect
unsuspecting Internet users to <superinternetdeals.com>, a commercial
website that offers products and services that are in competition with Complainant’s
financial services. Additionally, Respondent’s website makes use of pop-up
advertisements, further supporting a finding that Respondent reaps commercial
gain from its infringing use of Complainant’s mark in the domain names.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the WELLS FARGO moniker; thus,
Respondent fails to establish rights in the domain names. See Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide
offering of services in a respondent’s operation of web-site using a domain
name which is confusingly similar to the Complainant’s mark and for the same
business”).
No evidence before the
Panel suggests Respondent is commonly known by the domain names under Policy ¶
4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the
disputed domain names is “Seventh Summit Ventures,” and not one of the
confusing second-level domains that infringe on Complainant’s WELLS FARGO mark.
Moreover, Respondent is not authorized or licensed to make use of Complainant’s
mark for any purpose, or in connection with any online offering. 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); see also MRA Holding, LLC v. Costnet, FA 140454
(Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does
not even correctly spell a cognizable phrase” in finding that Respondent was
not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
Accordingly, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Although Respondent’s
registration and use of the subject domain names satisfy various bad faith
criteria under the Policy, the Panel finds Respondent acted in bad faith under
Policy ¶ 4(b)(iv). Specifically, Respondent makes use of confusingly similar
variations of Complainant’s famous WELLS FARGO mark to ensnare unsuspecting
Internet users. Respondent then redirects the users to its competing website
where they are then confronted with various pop-up advertisements. The content
displayed on Respondent’s website, located at <superinternetdeals.com>,
creates a presumption that Respondent is commercially profiting from the unauthorized
use of Complainant’s established mark in its domain names. Additionally,
unrefuted evidence reveals that Respondent is a habitual typosquatter, meaning
Respondent has a history of registering confusingly similar variations of
famous marks in domain names in order to commercially benefit. Such
infringement is what the Policy was intended to remedy. See AutoNation
Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (The scope of
an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting,
nothing else"); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with intent
to intercept and siphon off traffic from its intended destination, by preying
on Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith”); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
shall be GRANTED.
Accordingly, it is
Ordered that the <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>,
<wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>,
and <wellsfsrgo.com> domain names be TRANSFERRED from
Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: June 10, 2003
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