Wells Fargo & Company v. Lucy Farrell
Claim Number: FA0612000878109
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 Lucy Farrell (“Respondent”),
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <wellfargo-verified.com>, registered with Tucows 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 3, 2007.
On January 2, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <wellfargo-verified.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 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@wellfargo-verified.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 30, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <wellfargo-verified.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellfargo-verified.com> domain name.
3. Respondent registered and used the <wellfargo-verified.com> domain name 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. Complainant provides banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers at over 6,000 locations worldwide. Moreover, Complainant offers numerous services via the Internet through its <wellsfargo.com> domain name. In connection with the provision of these services, Complainant holds numerous trademark registrations internationally, including the WELLS FARGO mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 779,187 issued October 27, 1964).
Respondent registered the <wellfargo-verified.com> domain name on September 9, 2006. Respondent’s domain name at one time resolved to a website that was identical in appearance to Complainant’s legitimate website and invited Internet users to enter their personal account name and password. Currently, Respondent’s domain name does not resolve to an active website.
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 asserts rights in the WELLS FARGO mark through
registration with the USPTO. The Panel
finds that registration of a mark with a trademark authority sufficiently
establishes rights in that mark for purposes of Policy ¶ 4(a)(i). 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 [or] have acquired secondary meaning.”); see also 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.”).
Complainant contends that
Respondent’s <wellfargo-verified.com> domain name
is confusingly similar to Complainant’s WELLS FARGO mark. Respondent’s domain name retains the dominant
features of Complainant’s mark but removes the letter “s” and the space between
the terms “wells
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must initially
demonstrate that Respondent lacks rights or legitimate interests with regard to
the disputed domain name. Once Complainant sufficiently establishes a prima facie case, however, the burden
shifts to Respondent to demonstrate that it has rights or legitimate interests
in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see
also 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).”). The Panel finds that Complainant has demonstrated a
prima facie case and will examine the
evidence on record to determine whether Respondent has any rights or legitimate
interests with respect to the disputed domain name pursuant to Policy ¶
4(c).
Moreover, based upon the evidence on record, the Panel finds that Respondent is not commonly known by the <wellfargo-verified.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant contends that Respondent is not associated with Complainant, and is not authorized by Complainant to use the WELLS FARGO mark. Moreover, Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that the evidence fails to demonstrate that Respondent is commonly known by the <wellfargo-verified.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Complainant has submitted evidence that Respondent was using the <wellfargo-verified.com> domain name for the purposes of operating a website identical in appearance to Complainant’s legitimate website. Complainant further contends that Respondent was attempting to defraud Internet users by coaxing them into divulging their personal account information for Respondent’s own commercial gain. The Panel finds that the use of a domain name in an elaborate “phishing” scheme is neither 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 Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Moreover, Complainant contends that Respondent’s <wellfargo-verified.com> domain name does not currently resolve to an active website. In light of Respondent’s failure to submit a response, the Panel finds that Respondent has failed to show any demonstrable preparations to use the disputed domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(a)(ii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where the respondent made no use of the infringing domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <wellfargo-verified.com> domain name in connection with a “phishing” scheme, where Respondent’s domain name at one time resolved to a website identical in appearance to Complainant’s legitimate website and that was used to defraud Internet users out of their personal account information, is evidence of bad faith registration and use. In Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004), the panel found that the respondent’s use of a domain name confusingly similar to Complainant’s mark, for the purpose of redirecting Internet users to a website imitating Complainant’s billing website, and that was used to fraudulently acquire personal information from Complainant’s clients was clear evidence of bad faith registration and use. Similarly in Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004), the panel found bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients. In the matter at hand, the Panel, too, holds Respondent’s prior use of the <wellfargo-verified.com> domain name to be bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Moreover, Complainant contends that Respondent’s failure to currently use the disputed domain name in any way is further evidence of bad faith registration and use under the Policy. In Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), the panel held that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” Additionally, in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that the respondent’s inactive use of the domain name satisfied the requirement of Policy ¶ 4(a)(iii). This Panel finds that Respondent’s failure to use the <wellfargo-verified.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
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 <wellfargo-verified.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 6, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum