Wells Fargo & Company v. Above.com Domain Privacy
Claim Number: FA1612001708135
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <w3llsfargo.com>, registered with Above.com Pty 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 19, 2016.
On December 21, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <w3llsfargo.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2017 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@w3llsfargo.com. Also on December 22, 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 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <w3llsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <w3llsfargo.com> domain name.
3. Respondent registered and uses the <w3llsfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has long used the WELLS FARGO mark in connection with providing financial services. Complainant holds a registration for the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 779,187, registered October 27, 1964).
Respondent registered the <w3llsfargo.com> domain name on June 7, 2012, and uses it to redirect Internet users to third party websites conducting unauthorized surveys, hosting generic landing pages, or hosting malware.
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.”).
Complainant has rights in the WELLS FARGO mark based on registration of the mark with the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <w3llsfargo.com> domain name incorporates the WELLS FARGO mark, and merely replaces the letter “e” in the mark for the number “3” and adds the gTLD “.com.” Panels have held that minor misspellings of a mark in a domain name and adding a gTLD are not sufficient to distinguish a domain name from a mark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). The Panel similarly finds that Respondent’s <w3llsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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. If 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.”).
Complainant argues that Respondent has no rights in the WELLS FARGO mark, is not a licensee of Complainant, and is not commonly known by the disputed domain name. The WHOIS information associated with the disputed domain name identifies Respondent as “Above.com Domain Privacy.” Prior panels have held that a respondent is not commonly known by the disputed domain name based on a lack of evidence to the contrary where the respondent used a privacy service. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next claims that Respondent’s use of the domain name to redirect Internet users to third party websites conducting unauthorized surveys, to websites hosting generic landing pages, or to websites hosting malware, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Previous panels have found that using another’s mark in a domain name to resolve to websites hosting advertisements or malware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Virginia College Savings Plan v. Zhouda, FA 1689209 (Forum Sept. 19, 2016) (finding that respondent using a disputed domain name to redirect to a website hosting ransomware is not a bona fide offering of goods or services or a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent’s use of the disputed domain name is not a use within the parameters of Policy ¶¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the WELLS FARGO mark in the disputed domain name and the resolving website demonstrates an intent to attract and confuse Internet users for commercial gain. The Panel agrees and finds that Respondent’s use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)); see also Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Respondent’s domain name <w3llsfargo.com> merely differs from the WELLS FARGO mark through replacing the letter “e” with the number “3.” Prior panels have held that typosquatting, or registering a domain name that is a mere misspelling of another’s mark, evinces bad faith registration and use under Policy ¶ 4(a)(iii). See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum October 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent’s typosquatting constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the WELLS FARGO mark, based on the longstanding use and fame of the WELLS FARGO mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights when it registered the disputed domain name, which is further evidence of bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <w3llsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 25, 2017
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