Wells Fargo & Company v.
Ehostpros.com
Claim
Number: FA0412000386980
Complainant is Wells Fargo & Company (“Complainant”),
represented by Adam Lindquist Scoville, of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is Ehostpros.com
(“Respondent”), P.O. Box 778, Santa Monica, CA 90406-0778.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <customers-wellsfargo.com>, registered
with Enom, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
22, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 22, 2004.
On
December 27, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <customers-wellsfargo.com> is
registered with Enom, Inc. and that Respondent is the current registrant of the
name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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
December 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 19, 2005 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@customers-wellsfargo.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 26, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <customers-wellsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <customers-wellsfargo.com> domain
name.
3. Respondent registered and used the <customers-wellsfargo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, provides quality banking, financial and related
goods and services. Complainant owns
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the WELLS FARGO mark (Reg. No. 779,187 issued October 27,
1964 for banking and trust services, Reg. No. 1,167,626 issued September 1,
1981 for real estate brokerage and Reg. No. 1,273,144 issued April 3, 1984 for
armored trucks and structural parts).
Complainant also holds trademark registrations for the WELLS FARGO mark
in jurisdictions throughout the world.
Complainant has used the WELLS FARGO mark in commerce since 1852.
Complainant
registered and uses the <wellsfargo.com> domain name to inform the public
and Complainant’s customers of the broad array of services that Complainant
offers. Many of these services are
offered to Complainant’s customers directly through its websites.
Respondent
registered the <customers-wellsfargo.com> domain name on December
8, 2004. By December 9, Respondent was
using the domain name to display an exact reproduction of Complainant’s website
and customer log-in page, in order to trick unassuming Wells Fargo customers
into providing valuable personal and financial information. This scam is
commonly known as “phishing.”
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 continuous use of the mark in commerce since 1852. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also 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.”)
Respondent’s <customers-wellsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark since the
domain name incorporates the mark in its entirety and merely adds the generic
term “customers” and connects this term with a hyphen. Neither of these changes are enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business); see also Health
Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see
also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that the hyphens and top-level
domains are irrelevant for purposes of the Policy).
Furthermore, the addition of the top-level domain “.com” and the
omission of the space between the terms in Complainant’s mark are insignificant
in making a confusing similarity determination under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to respond to the Complaint, the Panel may construe all
reasonable allegations and arguments set forth by Complainant as true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); see also 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 the Complaint to be deemed true).
In addition, the
Panel interprets Respondent’s failure to respond as an admission that
Respondent lack rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See 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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Furthermore, there is no indication that Respondent is either
commonly known by the <customers-wellsfargo.com> domain name or
authorized to register domain names featuring the WELLS FARGO mark. Thus, Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom
Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent was not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Moreover,
Respondent’s domain name is confusingly similar to Complainant’s WELLS FARGO
mark and is being used to acquire private customer information by fraudulent
means. Such use is neither a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Vivendi Universal
Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that
Respondent lacked rights and legitimate interests in the domain name where
Respondent copied Complainant’s website in order to steal account information
from Complainant’s customers); see also American Int’l Group, Inc. v. Busby,
FA
156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off
as Complainant online, through wholesale copying of Complainant’s website,
Respondent had no rights or legitimate interests in the disputed domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the domain name, which is a confusingly similar variation of
Complainant’s WELLS FARGO mark, to fraudulently retrieve personal and financial
information from Complainant’s customers.
Such use is evidence that Respondent registered and used the domain name
in bad faith pursuant to Policy ¶ 4(a)(iii).
See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to
misrepresent itself as Complainant and to provide misleading information
to the public supported a finding of bad faith); see also Vivendi
Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002)
(finding that where Complainant’s mark
was appropriated at registration, and a copy of Complainant’s website was used
at the domain name in order to facilitate the interception of Complainant’s
customer’s account information, Respondent’s behavior evidenced bad faith use
and registration of the domain name).
Furthermore, Respondent presumably commercially benefits by taking
advantage of consumer confusion to acquire personal and financial information
via the confusingly similar domain name.
This is evidence that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv).
See H-D
Michigan, Inc. v. Petersons Auto.,
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); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
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 <customers-wellsfargo.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: February 9, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum