Wells Fargo & Company v. lin zong xing
Claim Number: FA1611001704833
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is lin zong xing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargocreditcards.com>,(‘the Domain Name’) registered with eName Technology Co., Ltd..
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on December 1, 2016.
On November 30, 2016, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <wellsfargocreditcards.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. 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 December 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2016 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@wellsfargocreditcards.com. Also on December 2, 2016, 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 January 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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's contentions can be summarised as follows:
The registration agreement for the Domain Name is in Chinese, however since the Domain Name itself and the web sites to which it points are (without exception) in English, the proceedings are capable of proceeding in English in the interests of due expedition.
Complainant has exclusive registered trade mark rights in the famous mark WELLS FARGO mark in the USA and worldwide and has provided financial services under the mark since 1852. It also operates a web site at wellsfargo.com.
The Domain Name is confusingly similar to Complainant's famous WELLS FARGO mark and its domain name. The Domain Name is simply Complainant’s famous WELLS FARGO mark plus the generic terms ‘credit’ and ‘cards’ and the gTLD .com which are not sufficient to distinguish the Domain Name from Complainant’s trade mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent has no trade mark rights in the Domain Name and is not a licensee of Complainant.
Respondent has never used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services. The Domain Name points to third party links including competing banking products and malware sites. Respondent is not commonly known by the Domain Name.
The Domain Name was created in 2013 by which time Complainant WELLS FARGO mark was famous. The Domain Name was used and registered in bad faith to attract Internet users by creating a likelihood of confusion with Complainant’s WELLS FARGO mark for financial gain. Other instances of redirection forward the user to ransomware sites that generate error codes and messages which prompt users to call a 1-888 number to fix an error. When the number is contacted the scammer has the user provide access to the computer and malware is installed allowing the scammer to access private information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has exclusive registered trade mark rights in the famous mark WELLS FARGO in the USA and worldwide and has provided financial services under the mark since 1852. It also operates a web site at wellsfargo.com.
The Domain Name has been linked to third party links offering competing financial products and to sites designed to lead to the installation of malware on an Internet user’s computer.
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(f), 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 (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.”).
Preliminary Issue: Language Request
Pursuant to UDRP Rule 11 (a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case and the fact that the domain names and all the web sites attached to it are in English, the Panel decides that the proceedings should be in English.
Identical or Confusingly Similar
The Domain Name consists of a sign similar to Complainant's WELLS FARGO mark (which is registered in USA for financial services with first use in commerce recorded as 1852), the generic term ‘credit cards’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘credit cards’ does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.
The gTLD .com does not serve to distinguish the Domain Name from the WELLS FARGO mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact. commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant has not licensed Respondent to use its WELLS FARGO mark.
Complainant has provided evidence that the Domain Name has been pointed to links to third party sites, including a site designed to perpetuate malware.
Previous panels have held that use of a domain name to distribute malicious computer software does not establish any rights or legitimate interests in the domain name. See Ceridian Corp v Versata Software Inc., FA 1259927 (Forum June 23, 2009)(finding that a respondent’s use of a domain name to direct Internet users to a website which attempts to download computer viruses failed to create any semblance of bona fide offering of goods and services under Policy 4 (c ) (i) or a legitimate non commercial or fair use pursuant to Policy 4 (c ) (iii)).
Nor does posting to links to third party commercial sites show rights or legitimate interests. See Priceline.com LLC v levesque, bruno, FA 1506 001625137 (Forum July 29, 2015)(‘The Panel finds that the Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a web site unrelated to the mark does not engage in a bona fide offering of goods or services under Policy 4 (c ) (i), nor does it make a legitimate non commercial or fair use under Policy 4 (c ) (iii).
Accordingly the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Domain Names which attempt to download malware have been found to justify a finding of bad faith. See Twitter, Inc. v Kiribati Media/Kiribati 200 Media Limited, FA 1502001603444 (Forum Mar 19, 2015) (‘Using the disputed domain name in a scheme to download malicious software onto unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy 4 (a) (iii).) Further the combination of the WELLS FARGO mark and the term ‘credit cards’ referring to Complainant’s business is very specific and evidences on the balance of probabilities the knowledge of Respondent of Complainant and the latter’s activities at the time of registration.
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iii). There is therefore no need to consider additional grounds of bad faith put forward by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargocreditcards.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: January 9, 2017
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