Wells Fargo & Company v. crew mdn
Claim Number: FA1510001643446
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is crew mdn (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <welliesfargo.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2015; the Forum received payment on October 23, 2015.
On October 22, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <welliesfargo.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2015 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@welliesfargo.com. Also on October 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" 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 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:
Complainant has registered the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 779,187, registered Oct. 27, 1964). The mark is used on or in connection with banking and financial services.
The <welliesfargo.com> domain name is confusingly similar to the WELLS FARGO domain name because the domain name contains the entire mark and differs only by adding the letters “ie” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because Respondent was using the domain name to try to pass itself off as Complainant. Currently, the domain name resolves to a blank webpage.
Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent is attempting to commercially profit from a likelihood of confusion, which is bad faith under Policy ¶ 4(b)(iv). Also, Respondent has actual knowledge of Complainant’s trademark rights at the time the disputed domain name was registered. Finally, Respondent has now failed to make an active use of the disputed domain name.
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 the at-issue domain name to pass itself off as Complainant The domain name later addressed a blank webpage.
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)). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See 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).
The at-issue domain name differs from Complainant’s trademark by the insertion of the letters “ie” after the trailing “l” in the WELLS FARGO mark’s first term, by the deletion of the space between the terms, and by the addition of a “.com” top-level domain name. However, such minor differences fail to distinguish the <welliesfargo.com>domain name from Complainant’s WELLS FARGO trademark and therefore the Panel finds that Respondent’s <welliesfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO trademark under Policy ¶4(a)(i).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.’”); see also, State Farm Mut, Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark); see also, 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.”).
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 “crew mdn” 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 uses the confusingly similar domain name to direct Internet users to a blank webpage. Respondent has used such domain name to address a website that ostensibly offered services similar to those of Complainant and where Respondent displayed Complainant’s trademark and other intellectual property. Respondent involved the domain name in a scheme grounded in passing itself off as Complainant. Given the foregoing, Respondent’s 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
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.
As mentioned above Respondent used the at-issue domain name to pass itself off as Complainant. The <welliesfargo.com> website once addressed by Respondent’s confusingly similar domain name offered financial services and used Complainant’s WELLS FARGO mark along with other material that is proprietary to Complainant. Respondent’s motive could only have been to commercial benefit from the resulting confusion. Using the domain name in this manner demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Additionally, it is evident from the notoriety of Complainant’s trademark as well as Respondent’s use of Complainant’s trademark and other proprietary material on a website once addressed by the at-issue domain name that Respondent was familiar with Complainant’s WELLS FARGO mark at the time it registered the at-issue domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered the <welliesfargo.com> 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 <welliesfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 23, 2015
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