Wells Fargo & Company v. Andre Schneider / DomCollect AG
Claim Number: FA1406001566150
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Andre Schneider / DomCollect AG (“Respondent”), Zagreb, Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellkfargos.com>, registered with 1&1 Internet AG.
The undersigned certifies that he 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 25, 2014.
On Jun 25, 2014, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <wellkfargos.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@wellkfargos.com. Also on June 26, 2014, 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 July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Wells Fargo 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.
Wells Fargo holds numerous valid US registrations for the famous mark WELLS FARGO. Internationally, Wells Fargo holds valid registrations for the mark WELLS FARGO in numerous countries.
The Domain Name is confusingly similar to the famous WELLS FARGO® Marks and Wells Fargo’s domain name <wellsfargo.com>.
The WELLS FARGO Marks qualify as famous marks under the Lanham Act. This conclusion of fame has been reached by Prior UDRP panels.
The Domain Name is a misspelling of the WELLS FARGO Mark; <wellkfargos.com> involves merely moving the letter “s” to the end of the mark and adding the letter "k" in place of the "s" after "well" (plus adding the generic top-level domain “.com”). Given the de minimis difference between the Domain Name and the WELLS FARGO Mark, the Domain Name is confusingly similar to the WELLS FARGO Mark.
Upon information and belief, Respondent has no trademark or intellectual property rights in the Domain Name. Respondent is not and has never been a licensee of Wells Fargo.
Respondent has never made any use of, or demonstrable preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
The website at the Domain Name was reported for phishing activity. The Domain Name had directed Internet users to a website containing an almost identical copy of text and data entry fields associated with Complainant's website at wellsfargo.com and including its WELLS FARGO Marks.
The Domain Name now automatically redirects Internet users to a third party website which has been also been reported for phishing activity.
There is no evidence that Respondent has been commonly known by the Domain Name, or that the Domain Name is Respondent’s legal name.
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.
The registered Domain Name, standing by itself, is evidence of Respondent's bad faith. This constitutes typosquatting. Typosquatting on a famous trademark is per se evidence of bad faith.
The Domain Name was used and registered in bad faith to attract Internet users by creating a likelihood of confusion with the Complainant’s WELLS FARGO Mark, for financial gain. ICANN Policy § 4(b)(iv).
The <wellkfargos.com> domain name was used and registered by Respondent in an effort to deceive Internet users by providing a website with content nearly identical to Complainant's website displaying Complainant's WELLS FARGO Marks, holding Respondent out as “Wells Fargo”, alleging to provide financial services, and collecting sensitive financial information of the unsuspecting public.
The current use of the Domain Name further demonstrates the Respondent's bad faith use and registration through the automatic redirection of Internet users to a third party website which has also been reported for phishing activity. The third party website continues to deceive users into believing the website is sponsored by the Complainant. The content on the webpage contains no identifiers as to source and displays a message indicating that that a user’s personal and financial information may be at risk. The website then requests personal identification information to provide the user with a Free Credit Score.
Respondent has recently been found to have acted in bad faith in several UDRP proceedings in which the domain names were transferred to the respective complainants. These recent decisions include findings that the Respondent had registered and used multiple domain names in bad faith. Such a history of registering domain names found to be appropriating others’ marks demonstrates a pattern of bad faith registration and use under Policy ¶4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its WELLS FARGO mark as well as with numerous other registrars worldwide.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the WELLS FARGO mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent has used and uses the at-issue domain name in an attempt to acquire sensitive financial information such as user names, passwords, and bank accounts numbers through an illegal phishing scheme.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows it has trademark rights in the WELLS FARGO mark through its registration thereof with the USPTO, as well as other registrars worldwide. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
In forming the at issue domain name Respondent removes the “s” from the first term of Complainant’s mark inserting a “k” in its place, removes the mark’s space, adds an “s” to the mark’s second term, and appends the top-level domain name “.com” thereto. However, such modifications fail to distinguish the <wellkfargos.com>domain name from Complainant’s WELLS FARGO trademark under the Policy. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); 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.”). Therefore, the Panel finds that Respondent’s <wellkfargos.com> domain name is confusingly similar to Complainant’s WELLS FARGO trademark under Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Andre Schneider / DomCollect AG” as the at-issue domain name’s registrant and the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent has used and uses the confusingly similar domain name to direct Internet users to a website that mimics Complainant’s official website in furtherance of phishing scheme. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Dec. 13, 2007) (defining phishing as “a practice that is intended to defraud consumers into revealing personal and proprietary information.”) Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that the use of a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant characterizes Respondent as a typosquatter, however unlike a typosquatter who relies on Internet users’ predictable mistyping or misspelling of a targeted trademark to redirect and capture Internet traffic intended for the trademark holder, here Respondent registered the confusingly similar domain name so that Internet users already visiting Respondent’s imposter website, perhaps after being delivered to such website by a deceptive click-through link in an unsolicited email, will believe they are on Complainant’s official website even after glancing at their browser’s address bar. Rather than expecting that Internet users type Complainant’s address wrong, in our case Respondent hopes that website visitors misread the address they have landed on to be associated with Complainant when it is not. In contrast to typosquatting, the at-issue domain name is used to render its deception after the Internet user reaches the domain name’s website, rather than work as a device to get such users to Respondent’s website in the first place. Indeed, expecting any significant number of Internet users, if any at all, to mistakenly type the strangely misspelled at-issue domain name and thereby augment traffic to Respondent’s website would be wholly irrational. Therefore, the panel does not find typosquatting to be at play, at least not within the common meaning of the word.
Furthermore, Respondent’s use of the at-issue domain name does not seem to demonstrate bad faith under Policy ¶4(b)(iv). Paragraph 4(b)(iv) of the Policy conditions finding a respondent to have registered and used a domain name in bad faith where such respondent is “intentionally attempting to attract [Internet users] for commercial gain…” to a respondent controlled Internet location (emphasis added). As discussed above, attracting Internet user’s was not Respondent’s intent.
Nevertheless, Respondent’s use of the at-issue domain name in connection with a phishing scheme constitutes bad faith use and registration without reference to paragraph 4(b)(iv). Respondent’s purpose in registering and using the confusingly similar domain name was to criminally defraud Internet users and in the process disparage Complainant and its trademark. It is inconceivable that the confusingly similar domain name’s connection with such a foul scheme might be anything other than a bright marker unequivocally signaling Respondent’s bad faith registration and use of the domain name. See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011) (finding that a Respondent’s use of a disputed domain name as an e-mail address to pass itself off as a UDRP complainant in a phishing scheme is evidence of bad faith registration and use); see also 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). Moreover, using the domain name to abet a phishing scheme is surely disruptive to Complainant’s business and as such demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶4(b)(iii). Given the foregoing, it not surprising to find that Respondent has had multiple adverse decisions in prior UDRP proceedings further suggesting Respondent’s bad faith in the instant case pursuant to Policy ¶4(b)(ii).
Finally, it is evident from the notoriety of Complainant’s trademark, Respondent’s overt mimicry of Complainant’s official website on the website addressed by the at-issue domain name and the domain name’s undeniable reference to Complainant’s trademark, that Respondent was familiar with Complainant’s WELLS FARGO trademark at the time it registered the <wellkfargos.com> domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that it registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellkfargos.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 27, 2014
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