Wells Fargo and Company v. Unasi
Management Inc.
Claim
Number: FA0505000471513
Complainant is Wells Fargo and Company (“Complainant”),
represented by Ester Martin Maillaro, of Faegre and Benson, LLP,
1900 Fifteenth Street, Boulder, CO 80302-5414. Respondent is Unasi Management Inc. (“Respondent”), Galerias Alvear, Via
Argentina 2, Oficina #3, Zona 5, Panama 5235.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ewellsfargofinancial.com>, <wellsdfargofinancial.com>,
<wellsfargofiinancial.com>, <wellsfargofinamcial.com>,
<wellsfargofinancail.com>, <wellsfargofinancyal.com>,
<wellsfargofinanmcial.com>, <wellsfargofinanncial.com>,
<wellsfargofinnacial.com>, <wellsfargofinncial.com>, <wellsfargoginancial.com>,
<wellsfargoifinancial.com>, <wellsfargoofinancial.com>,
<wellsfargoservice.com> and <wwlwellsfargo.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 4, 2005.
On
May 6, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain names <ewellsfargofinancial.com>,
<wellsdfargofinancial.com>, <wellsfargofiinancial.com>,<wellsfargofinamcial.com>,
<wellsfargofinancail.com>, <wellsfargofinancyal.com>,
<wellsfargofinanmcial.com>, <wellsfargofinanncial.com>, <wellsfargofinnacial.com>,
<wellsfargofinncial.com>, <wellsfargoginancial.com>, <wellsfargoifinancial.com>,
<wellsfargoofinancial.com>, <wellsfargoservice.com>
and <wwlwellsfargo.com> 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
May 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 26, 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@ewellsfargofinancial.com, postmaster@wellsdfargofinancial.com,
postmaster@wellsfargofiinancial.com, postmaster@wellsfargofinamcial.com, postmaster@wellsfargofinancail.com,
postmaster@wellsfargofinancyal.com, postmaster@wellsfargofinanmcial.com, postmaster@wellsfargofinanncial.com,
postmaster@wellsfargofinnacial.com, postmaster@wellsfargofinncial.com, postmaster@wellsfargoginancial.com,
postmaster@wellsfargoifinancial.com, postmaster@wellsfargoofinancial.com, postmaster@wellsfargoservice.com
and postmaster@wwlwellsfargo.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
June 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ewellsfargofinancial.com>,
<wellsdfargofinancial.com>, <wellsfargofiinancial.com>,
<wellsfargofinamcial.com>, <wellsfargofinancail.com>,
<wellsfargofinancyal.com>, <wellsfargofinanmcial.com>,
<wellsfargofinanncial.com>, <wellsfargofinnacial.com>,
<wellsfargofinncial.com>, <wellsfargoginancial.com>, <wellsfargoifinancial.com>,
<wellsfargoofinancial.com>, <wellsfargoservice.com> and
<wwlwellsfargo.com>
domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <ewellsfargofinancial.com>, <wellsdfargofinancial.com>,
<wellsfargofiinancial.com>, <wellsfargofinamcial.com>,
<wellsfargofinancail.com>, <wellsfargofinancyal.com>,
<wellsfargofinanmcial.com>, <wellsfargofinanncial.com>,
<wellsfargofinnacial.com>, <wellsfargofinncial.com>, <wellsfargoginancial.com>,
<wellsfargoifinancial.com>, <wellsfargoofinancial.com>,
<wellsfargoservice.com> and <wwlwellsfargo.com>
domain names.
3. Respondent registered and used the <ewellsfargofinancial.com>,
<wellsdfargofinancial.com>, <wellsfargofiinancial.com>,
<wellsfargofinamcial.com>, <wellsfargofinancail.com>,
<wellsfargofinancyal.com>, <wellsfargofinanmcial.com>,
<wellsfargofinanncial.com>, <wellsfargofinnacial.com>,
<wellsfargofinncial.com>, <wellsfargoginancial.com>, <wellsfargoifinancial.com>,
<wellsfargoofinancial.com>, <wellsfargoservice.com> and
<wwlwellsfargo.com> domain names 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 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 from
Algeria to Zimbabwe.
Complainant has
used the WELLS FARGO mark in commerce since 1852. Complainant is a diversified
financial services company with $422 billion in assets and 146,000 employees.
Respondent
registered the <ewellsfargofinancial.com>, <wellsdfargofinancial.com>,
<wellsfargofiinancial.com>, <wellsfargofinamcial.com>,
<wellsfargofinancail.com>, <wellsfargofinancyal.com>,
<wellsfargofinanmcial.com>, <wellsfargofinanncial.com>,
<wellsfargofinnacial.com>, <wellsfargofinncial.com>, <wellsfargoginancial.com>,
<wellsfargoifinancial.com>, <wellsfargoofinancial.com>,
<wellsfargoservice.com> and <wwlwellsfargo.com> domain
names on April 16, 2005. Respondent’s domain names do not resolve to an
active website, and have not been used by Respondent to market any bona fide
goods or services.
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 United
States Patent and Trademark Office, 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 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.); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates. It is sufficient that Complainant can
demonstrate a mark in some jurisdiction.).
Respondent’s <ewellsfargofinancial.com>,
<wellsdfargofinancial.com>, <wellsfargofiinancial.com>,
<wellsfargofinamcial.com>, <wellsfargofinancail.com>,
<wellsfargofinancyal.com>, <wellsfargofinanmcial.com>,
<wellsfargofinanncial.com>, <wellsfargofinnacial.com>,
<wellsfargofinncial.com>, <wellsfargoginancial.com>, <wellsfargoifinancial.com>,
<wellsfargoofinancial.com>, <wellsfargoservice.com>
and <wwlwellsfargo.com> domain names are confusingly similar to
Complainant’s WELLS FARGO mark. Respondent’s domain names fully incorporate
Complainant’s mark, and only deviate with the addition of the generic top-level
domain (“gTLD”) “.com,” misspelled generic terms, and additional letters. These
additions to Complainant’s mark do not distinguish the domain names pursuant to
Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks”); see
also Treeforms, Inc. v. Cayne Indus.
Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that
confusion would result when Internet users, intending to access Complainant’s
website, think that an affiliation of some sort exists between Complainant and
Respondent, when in fact, no such relationship would exist); 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 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).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain names. Because Complainant’s
evidence and arguments are unopposed, the Panel is permitted to accept all reasonable
inferences made in the Complaint as true. See
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.”); 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).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent. Respondent’s failure to fulfill its burden
means that Respondent has failed to invoke any circumstances that could
demonstrate rights or legitimate interests in the domain names. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also 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).
Respondent
registered the disputed domain names on April 16, 2005 and has not made any use
of the disputed domain names. This period of inactivity is sufficient to
establish that Respondent has no rights or legitimate interests in the domain
names pursuant to Policy ¶¶ 4(c)(i) and (iii). See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain names is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding
no rights or legitimate interests where “Respondent registered the domain name
and did nothing with it”); see also Ziegenfelder
Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that
failure to provide a product or service or develop the site demonstrates that
Respondents have not established any rights or legitimate interests in the
domain name).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s famous mark. Thus, the Panel finds that Respondent has not
established rights or legitimate interests in the <ewellsfargofinancial.com>,
<wellsdfargofinancial.com>, <wellsfargofiinancial.com>,
<wellsfargofinamcial.com>, <wellsfargofinancail.com>,
<wellsfargofinancyal.com>, <wellsfargofinanmcial.com>,
<wellsfargofinanncial.com>, <wellsfargofinnacial.com>,
<wellsfargofinncial.com>, <wellsfargoginancial.com>, <wellsfargoifinancial.com>,
<wellsfargoofinancial.com>, <wellsfargoservice.com>
and <wwlwellsfargo.com> domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
not using the disputed domain names, which are confusingly similar to
Complainant's WELLS FARGO mark, for any purpose. Although the domain names were
registered less than three months ago, the Panel finds that it is inconceivable
that Respondent could make any use of the disputed domain names without
creating a false impression of association with Complainant. Such opportunistic
holding of a domain name that is confusingly similar to a well-known mark
equates to bad faith use and registration under Policy 4(a)(iii). See Phat
Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad
faith under Policy 4(a)(iii) even though the respondent had not used the domain
name because “it makes no sense whatever to wait until it actually 'uses' the
name, when inevitably, when there is such use, it will create the confusion
described in the Policy”); see also Alitalia-Linee Aeree Italiane S.p.A v.
Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the respondent made no use of the domain name in question, and there were no
other indications that the respondent could have registered and used the domain
name in question for any non-infringing purpose); see also Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark was so
obviously connected with the complainant and its products that the use of the
domain names by the respondent, who had no connection with the complainant,
suggests opportunistic bad faith); see also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it was inconceivable that Respondent could make any active use of the
disputed domain names without creating a false impression of association with
Complainant').
Furthermore,
Respondent registered the disputed domain names with actual or constructive
knowledge of Complainant’s rights in the WELLS FARGO mark due to Complainant’s
aggressive promotion of the mark in commerce and worldwide acclaim.
Registration of domain names confusingly similar to a mark, despite actual or
constructive knowledge of another’s rights in the mark, is evidence of bad
faith registration and use pursuant to 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 Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); 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 <ewellsfargofinancial.com>, <wellsdfargofinancial.com>,
<wellsfargofiinancial.com>, <wellsfargofinamcial.com>,
<wellsfargofinancail.com>, <wellsfargofinancyal.com>,
<wellsfargofinanmcial.com>, <wellsfargofinanncial.com>,
<wellsfargofinnacial.com>, <wellsfargofinncial.com>, <wellsfargoginancial.com>,
<wellsfargoifinancial.com>, <wellsfargoofinancial.com>,
<wellsfargoservice.com> and
<wwlwellsfargo.com> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 17, 2005
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