Wells Fargo & Company v. Mahmoud Nadim
Claim Number: FA0210000127720
Complainant is Wells Fargo & Company, Minneapolis, MN, USA (ďComplainantĒ) represented by Eunice P. de Carvalho, of Faegre & Benson LLP.† Respondent is Mahmoud Nadim, Dhaka, INDIA (ďRespondentĒ).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellfargo.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the ďForumĒ) electronically on October 10, 2002; the Forum received a hard copy of the Complaint on October 10, 2002.
On October 11, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <wellfargo.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name.† eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On October 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the ďCommencement NotificationĒ), setting a deadline of November 6, 2002 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2002, pursuant to Complainantís request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the ďPanelĒ) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the ďRulesĒ) ďto employ reasonably available means calculated to achieve actual notice to Respondent.Ē† Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forumís 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.††††† Respondentís <wellfargo.com> domain name is confusingly similar to Complainantís registered 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 did not submit a Response in this proceeding.
Complainant, Wells Fargo & Company, has been engaged in providing banking, financial and related services to the public under the WELLS FARGO mark since 1852. Complainant holds numerous trademarks registered with the U.S. Patent and Trademark Office (ďUSPTOĒ) for the WELLS FARGO mark, including, inter alia: 779,187; 838,059; 891,203; 1,131,103; and, 1,136,497. Complainant also holds international registrations protecting the WELLS FARGO mark, including, without limitation: Australia, Mexico, Chile, China, The Netherlands, Peru, Spain, Switzerland, United Kingdom, Austria, Venezuela, Canada, Haiti, South Africa, Italy and India, Respondentís place of domicile.
Since 1994, Complainant has conducted various financial operations from the <wellsfargo.com> domain name. The website informs the public and potential customers of Complainantís diverse financial services offered under the WELLS FARGO mark.
As a result of Complainantís continuous and extensive use of its established WELLS FARGO mark, the mark is known worldwide as being synonymous with Complainantís banking and financial services.
Respondent, Mahmoud Nadim, registered the <wellfargo.com> domain name on October 19, 2001. Complainantís investigation of Respondentís domain name reveals that the subject domain name resolves to <magazines.com>, a commercial website that offers various publications. Respondentís <magazines.com> domain name connects with a website that requires Internet users to enter personal information about themselves including name, street address, e-mail address and credit card information. Complainantís submission also indicates Respondentís website prominently features competing financial publications such as the Money, Forbes and Fortune magazines.
Paragraph 15(a) of the Rules instructs this Panel to ďdecide 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.Ē
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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 the 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.
Identical and/or Confusingly Similar
Complainant has established rights in the WELLS FARGO mark by registering the mark with the USPTO and numerous other internationally recognized trademark authorities, as well as subsequent continuous use of the mark in commerce.
Respondentís <wellfargo.com> domain name is confusingly similar to Complainantís WELLS FARGO mark. The variation between Complainantís mark and Respondentís domain name is minor. Respondent has merely excluded the letter ďsĒ from the WELLS portion of Complainantís mark. Respondentís variation fails to create a distinct mark, and presumably seeks to take advantage of a common typographical error, namely, mistyping Complainantís mark when entering it into the domain name. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter ďsĒ from Complainantís UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth ďwĒ or the omission of periods or other such generic typos do not change Respondentís infringement on a core trademark held by Complainant).
Accordingly, the Panel finds that Policy ∂ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent failed to submit a Response in this proceeding, thereby leaving Complainantís supported assertions unrefuted and unopposed. Therefore, the Panel is permitted to accept all reasonable inferences made by Complainant as true, provided the conclusions are not clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainantís allegations are true unless clearly contradicted by the evidence).
Respondentís <wellfargo.com> domain name resolves to a commercial website located at <magazines.com>. Respondent is engaging in a practice referred to as typosquatting, whereby registrants register slight variations of famous marks in order to benefit from Internet user confusion. Diverting Complainantís interested customers and potential clients to a website offering magazine subscriptions 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). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainantís trademarks); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that ďunauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or servicesĒ).
No evidence before the Panel suggests that Respondent is commonly known by the <wellfargo.com> domain name, or that Respondent can establish rights or legitimate interests in the domain name under Policy ∂ 4(c)(ii). Complainant has been using the WELLS FARGO mark in conjunction with its financial services since 1852, therefore it is unlikely that Respondent is commonly known by a confusingly similar variation of Complainantís established mark. Further, Respondent is not authorized or licensed to provide services under Complainantís WELLS FARGO mark, or any confusingly similar variation thereof. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainantís prior rights in the domain name precede Respondentís registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Policy ∂ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondentís <wellfargo.com> domain name resolves to a commercial website. It is evident that Respondent is attempting to benefit from the goodwill and recognition associated with Complainantís mark by connecting a confusingly similar variation of Complainantís mark to a commercial website. Previous Panels have determined that because the subject domain name has a commercial purpose and Respondent has failed to respond and contest Complainantís assertions, it is proper to presume that Respondent benefits from the use of the subject domain name. Respondentís opportunistic use of a confusingly similar variation of Complainantís mark in a domain name, for commercial gain, constitutes bad faith registration and use pursuant to Policy ∂ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (presuming Respondent profits from its diversionary use of Complainantís mark when Respondentís domain name resolves to commercial websites and Respondent fails to contest the Complaint, therefore, concluding bad faith pursuant to Policy ∂ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ∂ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Additionally, Respondentís typosquatting behavior has been determined to fulfill the bad faith requirements of Policy ∂ 4(a)(iii). The practice of deriving commercial benefits from the goodwill and recognition of othersí famous marks has been recognized as a bad faith use of a domain name under the UDRP. See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).
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 the requested relief shall be hereby GRANTED.
Accordingly, it is Ordered that the domain name <wellfargo.com> be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 29, 2002
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