Wells Fargo & Company v. Forum LLC
Claim Number: FA0603000665004
Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. Respondent is Forum LLC (“Respondent”), P.O. Box 2331, Roseau, Roseau 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellsfargoawards.com>, registered with Moniker Online Services, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 28, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoawards.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 March 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 2006 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@wellsfargoawards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <wellsfargoawards.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoawards.com> domain name.
3. Respondent registered and used the <wellsfargoawards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, has continuously used the WELLS FARGO mark in connection with its financial services since 1852. Complainant manages $422 billion in assets and maintains 146,000 employees at more than 6,000 locations around the United States. Complainant provides financial services for more than 27 million customers and has issued over six million credit card accounts.
Complainant holds numerous trademark registrations for the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 779,187 issued October 27, 1964; Reg. No. 838,059 issued October 31, 1967; Reg. No. 891,203 issued May 19, 1970; Reg. No. 1,131,103 issued February 19, 1980). Complainant has also registered the mark in numerous other countries, including Argentina, Australia, Canada, Denmark, Russia and Japan. Complainant also holds the registration for the <wellsfargo.com> domain name (registered on April 28, 1993).
Respondent registered the <wellsfargoawards.com> domain name on April 15, 2005. Respondent is operating a website at the disputed domain name that provides links to various third-party websites unrelated to Complainant.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Because Complainant holds numerous trademark registrations
for the WELLS FARGO mark with the USPTO and other international government
authorities, Complainant has established rights in the mark pursuant to Policy
¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <wellsfargoawards.com>
domain name is confusingly similar to Complainant’s
WELLS FARGO mark pursuant to Policy ¶ 4(a)(i), because it incorporates
Complainant’s entire mark and merely adds the generic term “awards.”
In Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), the panel found that the
respondent’s addition of generic terms to nineteen domain names wholly
incorporating the complainant’s SONY mark rendered the disputed domain names
confusingly similar, because the addition of generic terms did not “detract
from the overall impression of the dominant part of the name in each
case.” Therefore, Respondent’s addition
of the generic term “awards” to Complainant’s WELLS FARGO mark in the disputed
domain name renders the domain name confusingly similar under 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 the complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and
legitimate interests in the <wellsfargoawards.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <wellsfargoawards.com>
domain name. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Forum
LLC,” and there is no other evidence in the record suggesting that Respondent
is commonly known by the <wellsfargoawards.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <wellsfargoawards.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent’s <wellsfargoawards.com>
domain name resolves to a website displaying links to various content unrelated
to Complainant. In Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb.
Forum Oct. 17, 2003), the respondent registered the <nicklausgolf.com>
domain name, which included the complainant’s NICKLAUS mark, and used it to
operate a website displaying links to third-party websites. The panel held that the respondent’s diversion
of Internet users to websites unrelated to the complainant’s mark did not
represent a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Because Respondent is
also diverting Internet users seeking Complainant’s products to a website
containing links to third-party websites, its use of the disputed domain name
provides evidence that it lacks rights and legitimate interests in the <wellsfargoawards.com>
domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair
use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <wellsfargoawards.com> domain name, which is confusingly similar to Complainant’s WELLS FARGO mark, to redirect Internet users seeking information on Complainant’s financial services to a website displaying links to unrelated content. In Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003), the respondent registered several domain names confusingly similar to the complainant’s BANK OF AMERICA mark and was using them to operate a search engine website. The panel held that such registration and use constituted bad faith pursuant to Policy ¶ 4(b)(iv) stating, “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.” Similarly, Respondent is diverting Internet users seeking Complainant’s financial services to unrelated websites for its own commercial gain. Because Respondent is taking advantage of the confusing similarity between the <wellsfargoawards.com> domain name and Complainant’s WELLS FARGO mark, and presumably profiting from the goodwill associated with the mark, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <wellsfargoawards.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 9, 2006
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