Wells Fargo & Company v. Jasper Yiparinavich
Claim Number: FA1612001708140
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Jasper Yiparinavich (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsefargo.com>, registered with Fabulous.com Pty Ltd.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 19, 2016.
On December 20, 2016, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <wellsefargo.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.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@wellsefargo.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 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in WELLS FARGO and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking and financial services by reference to the trademark WELLS FARGO;
2. The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 779,187, registered October 27, 1964;
3. the disputed domain name was created on July 19, 2006 and resolves to a website hosting a landing page with third-party advertisements; and
4. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for WELLS FARGO, the Panel is satisfied that it has trademark rights in that term.[i]
The disputed domain name makes additions to the trademark in the form of an added letter “e”, plus the general top-level domain,“.com”. It is agreed that for the purposes of comparison, the gTLD can generally be ignored, as it can in this case.[ii] The additional letter “e” does not in the Panel’s assessment substantially affect the identity of the trademark. The compared terms remain phonetically and visually very similar and the trademark remains the recognizable element of the domain name.[iii]
Panel is satisfied that the disputed domain name is confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies “Jasper Yiparinavich”
as the registrant and so there is no evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent might hold relevant trademark rights. There is no indication that Respondent is making either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. On the contrary, the evidence accompanying the Complaint shows that the domain name redirects users to websites displaying commercial links, websites that may contain malware, or websites that attempt to force users to call support services to unlock their computer.[v]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response there is nothing on which a claim to rights or interests in the domain name can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case Panel finds, as separate matters, registration in bad faith and use in bad faith. Complainant is a large and well known bank as shown by the Complaint. Respondent is a known cybersquatter.[vi] It is more likely than not that Respondent knew of Complainant’s business and targeted its trademark. Panel finds registration in bad faith. Further, and as discussed above, the use of the domain name is in bad faith.[vii]
The Panel finds the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsefargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 31, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iii] See, by way of comparison, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (FORUM Aug. 3, 2015) finding <twitcch.tv> confusingly similar to the TWITCH TV trademark.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] 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 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.
[vi] See LinkedIn Corporation v. Jasper Yiparinavich, FA 1479878 (FORUM Feb. 18, 2013); Advance Auto Parts, Inc. D/B/A Advance Auto Innovations, LLC v. Jasper Yiparinavich, FA 1536010 (FORUM Feb. 7, 2014).
[vii] For example, the use described has been frequently held to be in bad faith for the purposes of Policy ¶ 4(b)(iv) had the matter been decided in that manner. 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); 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).
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