Wells Fargo & Company v. Ling Shun
Shing
Claim
Number: FA0310000205699
Complainant is Wells Fargo & Company (“Complainant”)
represented by Adam Lindquist Scoville of Faegre & Benson, LLP,
1700 Lincoln Street, Suite 3200, Denver, CO 80202-4004. Respondent is Ling Shun Shing, 138 Yi Xue Yuan Rd., Shangai, P.R. China 200032 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <fellsfargo.com>, <wellasfargo.com>,
<wellefargo.com>, <wellfargofinancial.com>, <wellfargos.com>,
<wellfsfargo.com>, <wellsafargo.com>, <wellsfarago.com>,
<wellsfarego.com>, <wellsfarfgo.com>, <wellsfargol.com>,
<wellsfargoretirement.com>, <wellsgfargo.com>, <wellwfargo.com>
and <yourwellfargomortgage.com> (hereinafter the “disputed domain
names”) 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 24, 2003; the Forum received a hard copy of the
Complaint on October 27, 2003.
On
October 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the disputed domain names are registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of
the names. 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 29, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 18, 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@fellsfargo.com, postmaster@wellasfargo.com,
postmaster@wellefargo.com, postmaster@wellfargofinancial.com, postmaster@wellfargos.com,
postmaster@wellfsfargo.com, postmaster@wellsafargo.com, postmaster@wellsfarago.com,
postmaster@wellsfarego.com, postmaster@wellsfarfgo.com, postmaster@wellsfargol.com,
postmaster@wellsfargoretirement.com, postmaster@wellsgfargo.com, postmaster@wellwfargo.com
and postmaster@yourwellfargomortgage.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 24, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 names be transferred from Respondent to Complainant.
A.
Complainant makes the following
assertions:
1. Respondent’s disputed domain names are
confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a number of trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the WELLS FARGO mark, including Reg. No. 779,187
(registered on October 27, 1964) in relation to banking and trust services.
Complainant also holds valid registrations for the mark in a number of other
countries, including the People’s Republic of China.
Complainant uses
its websites at the domain names <wellsfargo.com> and
<wellsfargofinancial.com> to inform present and potential customers of
the broad array of services offered by Complainant.
Respondent
registered the disputed domain names between September 9, 2002 and October 14,
2002. Respondent is using the domain names to redirect Internet traffic to a
website that features pop-up advertising and links to various third-party
websites.
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
demonstrated that it has rights in the WELLS FARGO mark through registration
with the USPTO. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Complainant
contends that the disputed domain names are confusingly similar to
Complainant’s WELLS FARGO mark because the domain names appropriate the mark
and either add, subtract or substitute one letter, or add generic or
descriptive terms such as “financial,” “retirement,” “your” or “mortgage.”
Neither the alteration of the WELLS FARGO mark by one letter nor the addition
of generic or descriptive terms sufficiently distinguish the disputed domain
names from the mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also Compaq Info.
Techs. Group, L.P. v. Seocho , FA
103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
failed to come forward with a Response. Therefore, the Panel is permitted to
make reasonable inferences in favor of Complainant and accept Complainant’s
allegations as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore,
Respondent has failed to invoke any circumstances that could demonstrate rights
to or legitimate interests in the domain names. Once Complainant has asserted a
prima facie case against Respondent, the burden shifts to Respondent to
show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the Panel and
Respondent did not come forward to suggest any right or interest it may have
possessed).
Respondent is
using the disputed domain names to redirect Internet traffic to a website that
features pop-up advertising and links to various third-party websites.
Respondent’s unauthorized commercial use of domain names confusingly similar to
Complainant’s mark represents neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii), because Respondent presumably receives compensation for each
misdirected Internet user. See Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements
was not a bona fide offering of goods or services); see also
WeddingChannel.com Inc. v. Vasiliev a/k/a NA, FA 156716 (Nat. Arb. Forum
June 12, 2003) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to websites unrelated to Complainant’s mark,
websites where Respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or services as
contemplated by the Policy).
Moreover, Respondent has
proffered no proof and no evidence in the record suggests that Respondent is
commonly known by any of the disputed domain names. Accordingly, the Panel
finds that Respondent has failed to demonstrate any rights to or legitimate
interests in the domain names with regard to Policy ¶ 4(c)(ii). See 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"); see also Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark).
Accordingly, the
Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent’s bad
faith registration and use of domain names confusingly similar to Complainant’s
WELLS FARGO mark is established by Respondent’s use of the domain names to earn
referral-fee revenue through pop-up advertising and links to various
third-party websites. Such use establishes Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iv) because Respondent is using the disputed
domain names to attract Internet users to Respondent’s website for commercial
gain by creating a likelihood of confusion with Complainant’s mark. See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also
Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Furthermore,
based on Respondent’s registration and use of multiple domain names confusingly
similar to Complainant’s WELLS FARGO mark, the Panel presumes Respondent had
actual or constructive notice of Complainant’s rights in its mark. The registration
and use of a domain name incorporating the mark of another despite actual or
constructive knowledge of the mark holder’s rights in the mark demonstrates bad
faith registration and use under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be
similar to another, one can infer an intent to confuse").
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <fellsfargo.com>, <wellasfargo.com>,
<wellefargo.com>, <wellfargofinancial.com>, <wellfargos.com>,
<wellfsfargo.com>, <wellsafargo.com>, <wellsfarago.com>,
<wellsfarego.com>, <wellsfarfgo.com>, <wellsfargol.com>,
<wellsfargoretirement.com>, <wellsgfargo.com>, <wellwfargo.com>
and <yourwellfargomortgage.com> domain names be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 8, 2003
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