Wells Fargo Home Mortgage v. Kenneth Terrill
Claim Number: FA0612000874478
Complainant is Wells Fargo Home Mortgage (“Complainant”), represented by Brian
J. Laurenzo, of Dorsey & Whitney LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellsfargoreversemortgages.com>, registered with Go Daddy Software, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.
On December 22, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoreversemortgages.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2007 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@wellsfargoreversemortgages.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2007, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargoreversemortgages.com> domain name is confusingly similar to Complainant’s WELLS FARGO HOME MORTGAGE mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoreversemortgages.com> domain name.
3. Respondent registered and used the <wellsfargoreversemortgages.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo Home Mortgage, is the number one
retail home mortgage lender in the
Respondent, Kenneth Terrill, registered the <wellsfargoreversemortgages.com> domain name on April 2, 2005. Respondent is using the disputed domain name to redirect Internet users to the domain name <houserichandcashpoor.com>, which displays a website that promotes Respondent’s home mortgage services that compete with Complainant. The website names Respondent as the President of the competing company.
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.
Complainant’s registration of its WELLS FARGO HOME MORTGAGE mark with the USPTO preceded Respondent’s registration of its <wellsfargoreversemortgages.com> domain name. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark to Complainant. Thus, the Panel finds that Complainant has established rights in the WELLS FARGO HOME MORTGAGE mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2000) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., 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.”).
The Panel finds that Respondent’s <wellsfargoreversemortgages.com> domain name is confusingly similar to Complainant’s WELLS FARGO HOME MORTGAGE mark. Respondent’s disputed domain name replaces the word “home” in Complainant’s mark with the word “reverse” and adds an “s” to the end of the word “mortgage.” This single word change and addition of the letter “s” do not avoid a finding of confusing similarity, especially since the disputed domain name still contains Complainant’s distinctive WELLS FARGO mark and the descriptive word “mortgage.” Therefore, the Panel concludes that Respondent’s <wellsfargoreversemortgages.com> domain name is confusingly similar to Complainant’s WELLS FARGO HOME MORTGAGE mark pursuant to Policy ¶ 4(a)(i), since the addition of the generic top level domain “.com” is without significance to this analysis. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wellsfargoreversemortgages.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because of the Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <wellsfargoreversemortgages.com> domain name. Respondent does not have any working relationship with Complainant, and is not licensed or authorized to use Complainant’s WELLS FARGO HOME MORTGAGE mark. The WHOIS information identifies Respondent as “Kenneth Terrill,” and Respondent’s website indicates that he is the President of a company that offers its own mortgage services that compete with Complainant. The Panel finds no other evidence in the record suggesting that Respondent is commonly known by the name. Therefore, the Panel concludes that Respondent is not commonly known by the <wellsfargoreversemortgages.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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").
Respondent is using the <wellsfargoreversemortgages.com>
domain name to redirect Internet users to the <houserichandcashpoor.com>
domain name, which displays a website promoting Respondent’s home mortgage
services that compete with Complainant.
Respondent is using Complainant’s WELLS FARGO HOME MORTGAGE mark for its
own commercial benefit, and such use constitutes neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Gardens Alive,
Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding
that the respondent used a domain name for commercial benefit by diverting
Internet users to a website that sold goods and services similar to those
offered by the complainant and thus, was not using the name in connection with
a bona fide offering of goods or services nor a legitimate noncommercial
or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wellsfargoreversemortgages.com> domain name redirects Internet users to the <houserichandcashpoor.com> domain name, which promotes Respondent’s home mortgage services that compete with Complainant. This use of the disputed domain name is likely to disrupt Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s use of the <wellsfargoreversemortgages.com> domain name, which is confusingly similar to Complainant’s WELLS FARGO HOME MORTGAGE mark, is likely to cause confusion among customers searching for Complainant’s mortgage services. Specifically, customers could become confused as to the affiliation, endorsement, or sponsorship of Respondent’s competing services. The Panel thus finds that Respondent’s attempt to monetarily profit from this likelihood of confusion between the disputed domain name and Complainant’s WELLS FARGO HOME MORTGAGE mark constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
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 <wellsfargoreversemortgages.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 8, 2007
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