Wells Fargo & Company v. Onlyne
Corporate Services11, Inc.
Claim
Number: FA0310000198969
Complainant is Wells Fargo & Company,
Minneapolis, MN (“Complainant”) represented by Adam Lindquist Scoville, of Faegre & Benson LLP, 1700 Lincoln St., Denver, CO 80202-4004. Respondent is Onlyne
Corporate Services11, Inc., Cuba Ave, 34th str. East Build.34-20, Panama, (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <welsfargo.com>, registered with iHoldings.com,
Inc. d/b/a DotRegistrar.com.
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.
Honorable
Paul A. Dorf (Ret.), as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 2, 2003; the Forum received a hard copy of the
Complaint on October 6, 2003.
On
October 6, 2003, iHoldings.com, Inc. d/b/a DotRegistrar.com confirmed by e-mail
to the Forum that the domain name <welsfargo.com> is registered
with iHoldings.com, Inc. d/b/a DotRegistrar.com and that Respondent is the
current registrant of the name. iHoldings.com, Inc. d/b/a DotRegistrar.com has
verified that Respondent is bound by the iHoldings.com, Inc. d/b/a
DotRegistrar.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
October 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 29, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@welsfargo.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 5, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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."
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 makes the following assertions:
1. Respondent’s <welsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <welsfargo.com> domain name.
3. Respondent registered and used the <welsfargo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds various marks including WELLS FARGO and over 50 registrations within the
“family” of marks (incorporating the words “wells fargo”) and over 30 ITU
registrations with the U.S. Patent and Trademark Office (“USPTO”) (e.g. Reg.
No. 791,983, Reg. No. 838,059, Reg. No. 891,203, Reg. No. 1,131,103, and Reg.
No. 1,136,406). Complainant also holds
various foreign registrations of the WELLS FARGO mark, registered in over 80
countries. Complainant has used the
WELLS FARGO mark since 1852, and registered it in 1962 (Reg. No. 779,187). Complainant also holds the registration for
the <wellsfargo.com> domain name.
Respondent
registered the <welsfargo.com> domain name on May 1, 1998. Respondent is using the disputed domain name
to redirect Internet users to <wmtransfer.com>, an online banking and
currency exchange service. Complainant
has provided a list of 22 other domain names registered by the Respondent. Almost all of the domain names on this list
are similar to well-known trademarks.
The main difference between Respondent’s domain names and the well-known
trademarks is an addition or omission of one or two letters.
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."
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(e), 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)
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.
Complainant has
established rights in the WELLS FARGO mark through registration with the USPTO
and subsequent continuous use of the mark in commerce. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning”); see also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing).
Respondent’s
<welsfargo.com> domain name is confusingly similar to
Complainant’s WELLS FARGO mark. The
only difference is that Respondent eliminated the letter “l” and a space. Such difference is insufficient to
differentiate Respondent’s <welsfargo.com> domain name from
Complainant’s WELLS FARGO mark.
Therefore, Complainant has established that the <welsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark. See
State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb.
Forum June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to Complainant’s STATE FARM mark); see also Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the disputed domain name to redirect Internet users to on-line banking
and currency exchange services at <wmtransfer.com>. These services are
similar to those the Complainant offers under the WELLS FARGO mark. Respondent is exploiting Complainant’s mark,
and trading on the goodwill created by Complainant’s mark, for its own
financial gain. Respondent’s
redirection from the <welsfargo.com>
domain name to <wmtransfer.com> does not establish rights or legitimate
interests in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to a financial services
website, which competed with Complainant, was not a bona fide offering of goods
or services); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to
find a bona fide offering of services in a respondent’s operation of web-site
using a domain name which is confusingly similar to the Complainant’s mark and
for the same business”).
Given the
WHOIS contact information for the disputed domain, one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
“welsfargo” in any derivation. In
addition, Complainant has not licensed or authorized Respondent to use the <welsfargo.com> domain name. Thus, it is reasonable for the Panel to
infer that Policy ¶ 4(c)(ii) does not apply to Respondent. See
Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv). Respondent created a likelihood
of confusion as to the source or sponsor of its website by using Complainant’s
famous WELLS FARGO mark to divert Internet users who misspell Complainant’s
<wellsfargo.com> domain name. The
content of the “diverted to” website implies that Respondent is commercially
profiting from the unauthorized use of Complainant’s WELLS FARGO mark in the
<welsfargo.com> domain
name. This fulfills the bad faith
requirement of Policy ¶ 4(a)(3). See Nat’l
Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the
intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on [Internet users] who make
common typing errors. Typosquatting is
inherently parasitic and of itself evidence of bad faith”); see also H-D
Mich., Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using Complainant’s famous
marks and likeness).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <welsfargo.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
November 17, 2003
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