Wells Fargo & Company v. Dowan Kim
Claim Number: FA0703000945922
Complainant is Wells Fargo & Company (“Complainant”), represented by Rita
Sanzgiri, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellfargo.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
The undersigned certifies that she has acted independently and impartially and to the best of 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
On
On April 9, 2007, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 30, 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@wellfargo.com by e-mail.
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellfargo.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.com> domain name.
3. Respondent registered and used the <wellfargo.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 that provides a variety of financial products and services throughout the world. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the WELLS FARGO mark (Reg. No. 779,187 issued October 27, 1964).
Respondent registered the disputed domain name on December 27, 2006. The disputed domain name resolves to a website featuring links to third-party, commercial websites, some of which appear to directly compete with Complainant’s financial services business.
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 Complainant’s registration and subsequent extensive use of the WELLS
FARGO mark for over forty years sufficiently establishes rights in the mark
pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <wellfargo.com> domain name contains Complainant’s mark in its entirety, eliminates the letter “s” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the elimination of a single letter from a protected mark, as well as the addition of a gTLD fails to sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); 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).
The Panel finds the Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <wellfargo.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to show that it does possess
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Respondent’s use of the disputed domain name is a classic case of typosquatting. Respondent registered a confusingly similar domain name that is almost identical to Complainant’s protected mark and presumably enjoys financial gain from the misdirection of unsuspecting Internet users who are likely confused as the source and affiliation of the resulting website. The Panel finds that Respondent’s use 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 Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that Respondent lacked rights and legitimate interests in the <jawsoflife.com> domain name where it was being used to divert Internet users to the website for Phoenix Rescue Tools, one of the complainant’s direct competitors); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
Complainant contends that Respondent is not commonly known
by the disputed domain name.
Respondent’s WHOIS registration information lists “Dowan Kim” as the registrant
of the <wellfargo.com>
domain name. In light of a lack of
evidence to show otherwise, the Panel finds that Respondent is not commonly
known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent’s disputed domain name resolves to a website
offering links to third-party, commercial websites that offer products and
services that compete with Complainant’s business. The Panel finds that such use amounts to a
disruption of Complainant’s business, evincing registration and use in bad
faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com,
FA 94384 (Nat. Arb. Forum
Presumably, Respondent enjoys financial benefit from its diversionary use of the disputed domain name. The Panel finds that such use amounts to an attraction for commercial gain, evincing registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
As referenced above, Respondent is engaging in a practice known as typosquatting. The Panel finds that typosquatting evinces registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
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.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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