Wells Fargo & Company v. Bui Duc Tien
Claim Number: FA1705001732651
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Bui Duc Tien (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellfargo-canada.com>, registered with P.A. Viet Nam Company Limited.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2017; the Forum received payment on May 24, 2017.
On May 30, 2017, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <wellfargo-canada.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@wellfargo-canada.com. Also on June 5, 2017, 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 June 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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, WELLS FARGO Financial Corp., is an American international banking and financial services holding company. In connection with its business, Complainant uses the WELLS FARGO trademark. Complainant has rights in the WELLS FARGO mark as a result of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187, registered Oct. 27, 1964) and other trademark agencies throughout the world. Respondent’s <wellfargo-canada.com> is confusingly similar to the WELLS FARGO mark as the space and “S” are omitted from the mark, a hyphen is added, the geographic identifier “Canada” is added, and the “.com” generic top-level domain (“gTLD”) is added as well.
Respondent has no rights or legitimate interests in or to <wellfargo-canada.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the WELLS FARGO mark in any respect. Respondent also operates an unrelated business—purporting to be a supplier of lubricant and grease additive compounds—which does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <wellfargo-canada.com> in bad faith. Respondent incorporates a close derivation of Complainant’s mark and utilizes Complainant’s trade dress on the resolving website in order to confuse Internet users for Respondent’s commercial gain under the language of Policy ¶ 4(b)(iv). Respondent’s use also imputes its actual and/or constructive knowledge of Complainant and Complainant’s rights in the WELLS FARGO mark. Further, Respondent has likely been using the domain name in furtherance of a phishing scam given the third party content Respondent has incorporated on its resolving website, coupled with a legitimate e-mail address. Through its fraudulent efforts, Respondent has attempted to fraudulently obtain personal information from Internet users, evincing bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Wells Fargo & Company, of Minneapolis, MN, USA. Complainant is the owner of domestic and international registrations for the mark WELLS FARGO, and various related marks, which it has used continuously since at least as early as 1964, in connection with its provision of diversified financial services including banking, insurance, mortgages, and consumer, as well as commercial lending.
Respondent is Bui Duc Tien, of Ho Chi Minh City, Vietnam. Respondent’s registrar’s address is listed as the same. The Panel notes that <wellfargo-canada.com> was registered on or about April 4, 2017.
Panel Note: Supported Language Request
The Panel notes that Complainant requests the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement. Here, Complainant asserts that Respondent’s resolving website is entirely arranged in the English language, and the domain name itself is comprised of English terms. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been provided by Complainant to support the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel finds that the proceeding shall be in English.
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 claims it has rights in the WELLS FARGO mark as a result of its registration with the USPTO (e.g., Reg. No. 779,187, registered Oct. 27, 1964) and other trademark agencies throughout the world. Registration with the USPTO is sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s evidence of a USPTO registration for the WELLS FARGO mark is sufficient to establish rights under Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <wellfargo-canada.com> is confusingly similar to the WELLS FARGO mark as the space and “S” are omitted from the mark, a hyphen is added, the geographic identifier “Canada” is added, and the “.com” gTLD is added as well. gTLDs are irrelevant under the Policy, as are spaces. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Mere misspellings also fail in providing distinction. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix). Further, the addition of a geographic identifier—specifically, “Canada”— also does not suffice in overcoming a finding of confusing similarity. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark). The Panel here finds that <wellfargo-canada.com> is confusingly similar to the WELLS FARGO mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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). Complainant has met this burden.
Complainant asserts that Respondent has no rights or legitimate interests in or to <wellfargo-canada.com>. In support of this assertion, Complainant indicates that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the WELLS FARGO mark in any respect. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Bui Duc Tien” and Respondent has not provided any evidence contrary to Complainant’s assertions. The Panel here finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the disputed domain name.
Furthermore, Complainant contends that Respondent also operates an unrelated business—purporting to be a supplier of lubricant and grease additive compounds—which does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use. Unrelated business offerings do not amount to a showing of rights and legitimate interests. See generally Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent’s unrelated use for the purposes of conducting an oil/lubricant business demonstrates that Respondent has no rights or legitimate interests in or to the disputed domain name.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent registered and used <wellfargo-canada.com> in bad faith. Complainant notes that Respondent incorporates a close derivation of Complainant’s mark to operate a website unrelated to Complainant’s business, and utilizes Complainant’s trade dress on the resolving website in order to confuse Internet users for Respondent’s commercial gain under the language of Policy ¶ 4(b)(iv). Unrelated use may impute Policy ¶ 4(b)(iv) bad faith. See generally MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). The Panel notes Complainant provided exhibits that demonstrate Respondent’s use, especially as it relates to the extent to which Respondent has copied third party content. The Panel here finds that Respondent has registered and uses the domain name in bad faith pursuant to the language of Policy ¶ 4(b)(iv).
Further, Complainant asserts that Respondent has likely been using the domain name in furtherance of a phishing scam given the aforementioned third party content Respondent has incorporated on its resolving website. Complainant also contends that this use is coupled with a legitimate e-mail address, and that through its fraudulent efforts, Respondent has attempted to obtain personal information from Internet users, evincing bad faith. Phishing schemes can be accomplished in numerous ways, and have been seen as nonexclusive evidence of bad faith under Policy ¶ 4(a)(iii). See generally Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). See also Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). The Panel notes the previously referenced Complainant’s exhibits indicating Respondent’s purported incorporation of both Complainant’s trade dress (in creating its “WELL FARGO” logo) and third party content on the resolving website. There are also areas for Internet users to input personal information, which, through the totality of the circumstances, supports a conclusion that Respondent is engaged in a fraudulent scheme to acquire Internet users’ personal information, and that such a scheme constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wellfargo-canada.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 11, 2017
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