Wells Fargo & Company v. Yuan LIU
Claim Number: FA1708001742879
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Yuan LIU (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargo.cam>, registered with 101domain GRS 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2017; the Forum received payment on August 3, 2017.
On August 3, 2017, 101domain GRS Limited confirmed by e-mail to the Forum that the <wellsfargo.cam> domain name is registered with 101domain GRS Limited and that Respondent is the current registrant of the name. 101domain GRS Limited has verified that Respondent is bound by the 101domain GRS 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 August 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@wellsfargo.cam. Also on August 7, 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 August 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
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. See Compl., at Attached Ex. C. Respondent’s <wellsfargo.cam> domain name is identical or confusingly similar to the WELLS FARGO mark as the mark is incorporated entirely, less the space, with the mere addition of the “.cam” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <wellsfargo.cam> domain name. 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. Further, Respondent has not made any use of the domain name; rather, the domain name either automatically redirects Internet users to third party websites or to websites which contain malware. See Compl., at Attached Ex. F. This constitutes neither a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used the <wellsfargo.cam> domain name in bad faith. Respondent has acted in bad faith according to prior UDRP proceedings, indicating that this instant case is part of a pattern of bad faith under Policy ¶ 4(b)(ii). Automatic redirection to competing websites or malware both indicate bad faith under Policy ¶ 4(b)(iv). Lastly, Respondent likely had actual or constructive knowledge of Complainant and its mark under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States international banking and financial services holding company.
2. Complainant has established it trademark rights in the WELLS FARGO mark as a result of its registration of the mark 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.
3. Respondent registered the <wellsfargo.cam> domain name on March 14, 2017.
4. Respondent has caused the domain name automatically to redirect Internet users to third party websites or to websites which contain 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that 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. See Compl., at Attached Ex. C. The general consensus of UDRP panelists is that 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). Therefore, the Panel deems Complainant’s evidence of a USPTO registration for the WELLS FARGO mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is confusingly similar or identical or to Complainant’s WELLS FARGO mark. Complainant contends that Respondent’s the <wellsfargo.cam> domain name is confusingly similar or identical to the WELLS FARGO mark as the mark is incorporated entirely, less the space, with the mere addition of the “.cam” gTLD. Omission of spacing in a mark and addition of a gTLD are irrelevant in a Policy ¶ 4(a)(i) analysis for confusing similarity. 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)). The Panel finds that Respondent’s <wellsfargo.cam> domain name is identical to the WELLS FARGO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), and 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WELLS FARGO trademark and to use it in its domain name;
(b) Respondent has caused the domain name automatically to redirect Internet users to third party websites or to websites which contain malware;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends Respondent has no rights or legitimate interests in the <wellsfargo.cam> domain name as. 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 “Yuan LIU.” See Compl., at Attached Ex. B. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.;
(e) Complainant argues that Respondent has not made any use of the domain name; rather, the domain name either automatically redirects Internet users to third party websites or to websites which contain malware. See Compl., at Attached Ex. F. Redirection to competing websites or malware cannot evince rights and legitimate interests. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Here, the Panel notes the screenshots provided by Complainant that show the resolving website as displaying “Windows Security” warnings or other third party websites which may or may not compete with Complainant’s offerings. See Compl., at Attached Ex. F. Therefore, the Panel finds that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant urges that Respondent registered and used the <wellsfargo.cam> domain name in bad faith. First, Complainant contends Respondent has acted in bad faith according to prior UDRP proceedings, indicating that this instant case is part of a pattern of bad faith under Policy ¶ 4(b)(ii). Prior history of bad faith findings against a respondent may indicate bad faith in a current proceeding. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant provides the following decision in which Respondent was found to have acted in bad faith: Lorillard Licensing Company, LLC v. Liu Yuan / Yuan Liu, FA1706001736740 (Forum July 5, 2013); Pinterest Inc. v. Yuan LIU, FA1312001536010 (Forum—Decision Pending); and Dollar Bank, Federal Savings Bank v. Liu Yuan, D2016-0455 (WIPO May 21, 2016). Accordingly, the Panel finds Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that automatic redirection to competing websites or malware both indicate bad faith under Policy ¶ 4(b)(iv). The Panel notes the following decision in support of this assertion: 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); see also Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)). Again noting Exhibit F, the Panel finds that Respondent engaged in bad faith as proscribed by Policy ¶ 4(b)(iv).
Thirdly, Complainant additionally argues that Respondent registered the disputed domain names with full knowledge of Complainant’s prior use of, rights in and goodwill associated with the WELLS FARGO mark. Under Policy ¶ 4(a)(iii), such notice may constitute bad faith. Complainant first alleges that the WELLS FARGO mark has achieved such worldwide fame and recognition that Respondent must have had actual notice of its rights in the mark. See Enterprise Holdings, Inc. v. DomainManager/Domain Escrow, FA 1205001444228 (Forum June 28, 2012) (“The Panel finds that, due to the fame of Complainant’s [ENTERPRISE] mark, Respondent had actual knowledge of the mark and Complainant’s rights.”). Complainant also submits that Respondent’s domain name resolved to Complainant’s competitors’ websites. See Compl., at Attached Ex. F. The Panel may infer actual notice from the totality of the circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the WELLS FARGO mark, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <wellsfargo.cam> domain name using the WELLS FARGO mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargo.cam> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 30, 2017
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