Wells Fargo & Company v. LaPorte
Holdings, Inc.
Claim
Number: FA0501000399499
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 LaPorte
Holdings, Inc. (“Respondent”), ATTN:wellsfarge.com,
ATTN:wellsfargobankfinacialbank.com, ATTN:wewllsfargo.com, c/o Nameking, Inc.,
2202 S. Figueroa St., Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com>, registered with Nameking.com, Inc.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks
Johnson serves as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint January
12, 2005.
On
January 8, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com> are registered with Nameking.com, Inc. and
that Respondent is the current registrant of the names. Nameking.com, Inc.
verified that Respondent is bound by the Nameking.com, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
January 17, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 7, 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@wellsfarge.com, postmaster@wellsfargobankfinacialbank.com
and postmaster@wewllsfargo.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
February 11, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent
registered, <wellsfarge.com>,
<wellsfargobankfinacialbank.com> and <wewllsfargo.com>,
are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent has no rights to or legitimate
interests in the <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com> domain names.
3. Respondent registered and used the <wellsfarge.com>,
<wellsfargobankfinacialbank.com> and <wewllsfargo.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, is a diversified financial services company with
$422 billion in assets and 146,000 employees, providing banking, insurance,
investments, mortgage and consumer finance services for more that 27 million
customers through some 6,000 branch locations.
Complainant is the issuer of six million credit card accounts, and was
the number one originator of home mortgages in the United States in 2003. Complainant offers financial services in the
United States and throughout the world.
Since 1994,
Complainant has operated a website at the <wellsfargo.com> domain name.
Complainant has
provided financial services and related goods and services to the public under
the WELLS FARGO mark since 1852.
Complainant holds numerous valid United States Patent and Trademark
(“USPTO”) registrations for WELLS FARGO mark (Reg. Nos. 779,187 issued October
27, 1964; 1,131,103 issued February 19, 1980; 2,555,996 issued April 2, 2002).
Respondent
registered the <wellsfarge.com> domain name September 3, 2002, the
<wellsfargobankfinacialbank.com> domain name July 20, 2004 and the
<wewllsfargo.com> domain name September 7, 2004. Respondent’s domain names resolve to a
website that features links to various competing financial service providers.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established using extrinsic proof in this proceeding that it has legal and
common law rights in the WELLS FARGO mark through registration with the USPTO
and through continuous use of the mark in commerce since 1852. 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 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).
Respondent’s domain names are confusingly similar to Complainant’s
WELLS FARGO mark. Respondent’s <wellsfarge.com>
domain name merely substitutes the letter “e” for the letter “o” in
Complainant’s WELLS FARGO mark.
Respondent’s <wewllsfargo.com> domain name adds an
additional “w” to Complainant’s WELLS FARGO mark. Moreover, Respondent’s <wellsfargobankfinacialbank.com> domain
name incorporates the mark in its entirety and merely adds the descriptive term
“bank” twice as well as the descriptive term “financial,” which Respondent
misspelled as “finacial.” Such minor
alterations do not disguise the fact that Complainant’s WELLS FARGO mark is the
dominant feature of the disputed domain names and they are not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001)
(finding the domain name <belken.com>
confusingly similar to Complainant's BELKIN mark because the name merely
exchanged the letter “i” in Complainant's mark with the letter “e”); see
also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also 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).
Furthermore,
addition of the generic top-level domain “.com” and omission of the space
between the terms in Complainant’s mark are insufficient to overcome a finding
of confusing similarity 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); 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.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as being true and accurate. 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 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).
Complainant
asserted that Respondent has no rights or legitimate interests in the disputed
domain names and Respondent, in not submitting a response, did not rebut the
allegation. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the domain names pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); 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.”).
Respondent is
using the <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com> domain names, which contain confusing
similar versions of Complainant’s WELLS FARGO mark, to operate a website
featuring links to competing financial services providers. Such use is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that compete with Complainant’s goods
does not constitute a bona fide offering of goods and services).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s WELLS FARGO mark. Thus,
the Panel finds that Respondent lacks rights and legitimate interests in the
domain names pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interests where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com> domain names, which are confusingly similar
variations of Complainant’s famous mark, to operate a website featuring links
to competing financial services providers.
Such competing use constitutes disruption and is evidence that Respondent
registered and used the domain names in bad faith pursuant to Policy ¶
4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) & (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding Respondent acted in bad faith by attracting Internet users to a
website that competes with Complainant’s business).
Furthermore, the
Panel infers that Respondent receives click-through fees for diverting Internet
traffic to competing financial services providers. The Panel also finds that since Respondent’s domain names are
confusingly similar to Complainant’s WELLS FARGO mark, consumers accessing
Respondent’s domain names may become confused as to Complainant’s affiliation
with the resulting website. Thus,
Respondent’s commercial use of the disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See State Fair of
Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where Respondent registered the domain name <bigtex.net> to
infringe on Complainant’s goodwill and attract Internet users to Respondent’s
website); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where Respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that Complainant is the source of or is sponsoring the
services offered at the site).
Due to
Complainant’s registration of the WELLS FARGO mark with the USPTO as well as to
the international prominence that Complainant’s WELLS FARGO mark has acquired,
the Panel finds that Respondent registered the disputed domain names with
either actual or constructive knowledge of Complainant’s rights in the
mark. Thus, the Panel finds that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(a)(iii). See Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that Respondent had actual and constructive knowledge of Complainant’s
EXXON mark given the worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
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 <wellsfarge.com>, <wellsfargobankfinacialbank.com>
and <wewllsfargo.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 25, 2005
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