Wells Fargo & Company v blubloc annm
Claim Number: FA1403001548407
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is blubloc annm (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wachoviacapitalpartners.com>, registered with Soyouwantadomain.com LLC.
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. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2014; the National Arbitration Forum received payment on March 14, 2014.
On March 13, 2014, Soyouwantadomain.com LLC confirmed by e-mail to the National Arbitration Forum that the <wachoviacapitalpartners.com> domain name is registered with Soyouwantadomain.com LLC and that Respondent is the current registrant of the name. Soyouwantadomain.com LLC has verified that Respondent is bound by the Soyouwantadomain.com LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wachoviacapitalpartners.com. Also on March 18, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant’s Contentions
Policy ¶ 4(a)(i) Complainant’s Rights and the Confusingly Similar Domain Name
Complainant uses the WACHOVIA mark in connection with its global banking and finance services company. Complainant has United States Patent and Trademark Office ("USPTO") registrations (e.g., Reg. No. 883,529 registered Dec. 30, 1969).
Respondent’s <wachoviacapitalpartners.com> domain name is confusingly similar to the WACHOVIA trademark. Respondent adds the generic terms “capital” and “partners” after the distinctive WACHOVIA mark. Respondent also includes the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii) Respondent Lacks Rights and Legitimate Interests in Domain Name
Respondent has never owned or operated any business or organization that goes by the name of the <wachoviacapitalpartners.com> domain name. Respondent is not otherwise licensed or authorized to use the WACHOVIA mark by Complainant.
Respondent has never used, or prepared to use, the <wachoviacapitalpartners.com> domain name in connection with a bona fide offering of goods or services. Respondent has only ever used the domain name to link to a website promoting the financial products of third-parties (including Complainant’s competitors).
Policy ¶ 4(a)(iii) Respondent’s Bad Faith Registration and use of Domain Name
Respondent’s use of the <wachoviacapitalpartners.com> domain name capitalizes on the likelihood that Internet users will click on the website’s contents under the belief that Complainant endorses or approves of the content. Respondent profits from this confusion by way of advertising revenue or increased sales.
Complainant’s WACHOVIA mark is so famous that Respondent had to have had actual knowledge of the mark when it registered the domain name on November 26, 2013.
Respondent’s Contentions
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant uses the WACHOVIA mark in connection with its global banking and finance service company. Complainant has trademark protections for its WACHOVIA mark in the form of trademark registration with the USPTO (e.g., Reg. No. 883,529 registered Dec. 30, 1969) as well as other recognized trademark registrars. The Panel agrees that Complainant’s USPTO registration satisfies Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”).
Complainant argues that Respondent’s <wachoviacapitalpartners.com> domain name is confusingly similar to the WACHOVIA trademark. Complainant points out that Respondent adds the generic terms “capital” and “partners” after the distinctive WACHOVIA mark. Complainant further notes that Respondent also includes the gTLD “.com.” The Panel agrees that the <wachoviacapitalpartners.com> domain name is confusingly similar to the WACHOVIA trademark because none of the elements added to the mark provide a meaningful distinction. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has never owned or operated any business or organization that goes by the name of the <wachoviacapitalpartners.com> domain name. Complainant states that Respondent is not otherwise licensed or authorized to use the WACHOVIA mark by Complainant. The Panel notes the WHOIS information lists “blubloc annm blubloc.annm@gmail.com” as the domain name’s registrant of record. The Panel agrees there is no evidence to support a finding that Respondent is known by the domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant further argues that Respondent has never used, or prepared to use, the <wachoviacapitalpartners.com> domain name in connection with a bona fide offering of goods or services. Complainant notes that Respondent has only ever used the domain name to link to a website promoting the financial products of third parties. The Panel notes the evidence provided shows the domain name resolving to what appears to be a business website, along with the hyperlink to “credit restoration services,” which in turn takes Internet users to <creditrestoreusa.com>. The Panel finds that Respondent has no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in promoting its own unrelated credit management services through this confusingly similar domain name. See, e.g., Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Complainant has proven this element.
Complainant contends that Respondent’s use of the <wachoviacapitalpartners.com> domain name capitalizes on the likelihood that Internet users will click on the website’s content under the belief that Complainant endorses or approves of the content available on the <wachoviacapitalpartners.com> domain name’s website. Complainant alleges that Respondent profits from this confusion by way of advertising revenue or increased sales. The Panel agrees Respondent’s use of the domain name shows that Respondent is using the WACHOVIA mark in this domain name to attract Internet users to its own unrelated credit management services. The Panel concludes that such conduct amounts to Policy ¶ 4(b)(iv) intent to confuse Internet users for Respondent’s own commercial gains. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant claims that the WACHOVIA mark is so famous that Respondent had to have had actual knowledge of the mark when it registered the domain name on November 26, 2013. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <wachoviacapitalpartners.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 18, 2014
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