Wells Fargo & Company v. Xiangsheng Zhou
Claim Number: FA1408001576852
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Xiangsheng Zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellfargo.net>, registered with Guangzhou Ming Yang Information Technology Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2014; the National Arbitration Forum received payment on August 27, 2014. The Complaint was submitted in both English and Chinese.
On September 4, 2014, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <wellfargo.net> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the name. Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information Technology Co., Ltd 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 September 12, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@wellfargo.net. Also on September 12, 2014, the Chinese language 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 October 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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.
A. Complainant
i. Complainant owns the WELLS FARGO mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 779,187 registered Oct. 27, 1964). Complainant uses the WELLS FARGO mark in connection with banking and financial services, including insurance, mortgages, and consumer finance. The <wellfargo.net> domain name is confusingly similar to the WELLS FARGO mark.
ii. Respondent lacks rights in the disputed domain name. Respondent is not commonly known by the <wellfargo.net> name. Respondent is not and has never been a licensee of Complainant. The disputed domain name redirects to a warning message stating that the computer “may have been infected with a malicious virus due to recent internet activity.” The domain name is likely used to phish confidential information.
iii. Complainant has engaged in bad faith use and registration. Respondent uses the disputed domain name in violation of Policy ¶ 4(b)(iv) to lure Internet users to its own site using Complainant’s likeness, in furtherance of Respondent’s phishing activity. Respondent knew of Complainant’s mark at the time of registration, which evinces bad faith. Respondent has engaged in typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered December 31, 2010.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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 WELLS FARGO mark in connection with banking and financial services, including insurance, mortgages, and consumer finance. Complainant owns the WELLS FARGO mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 779,187 registered Oct. 27, 1964). Consistent with prior panels, this Panel finds Complainant’s USPTO registration satisfies the rights requirement of Policy ¶ 4(a)(i) irrespective of Respondent’s locality. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues the <wellfargo.net> domain name is confusingly similar to the WELLS FARGO mark. Complainant notes the disputed domain name removes the letter “s” from WELLS, inserts the “.net” generic top-level domain name (“gTLD”), and removes the spacing from the two-word mark. Panels have found confusing similarity after similar alterations. For example, in The Gap, Inc. v. Hanying Li, FA 1331209 (Nat. Arb. Forum July 29, 2010), the panel found the <oldavy.com> name confusingly similar to the OLD NAVY mark despite the removal of a single letter from the mark, the omission of spacing, and the affixation of a gTLD. Here, the Panel agrees that the affixation of a gTLD, and the removal of a single letter and spacing are insufficient alterations to differentiate the <wellfargo.net> domain name from the WELLS FARGO mark under Policy ¶ 4(a)(i).
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 Respondent lacks rights in the disputed domain name. In so arguing, Complainant claims Respondent is not commonly known by the <wellfargo.net> name, and that Respondent is not and has never been a licensee of Complainant. The Panel recalls that Respondent has failed to submit a response to refute these claims, and the only additional evidence to draw comes from the WHOIS record, which identifies “Xiangsheng Zhou” as registrant. Accordingly, the Panel agrees that Respondent is not commonly known by the <wellfargo.net> name for purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues that the <wellfargo.net> domain name is not being used for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant claims the disputed domain name redirects to a warning message stating that the computer “may have been infected with a malicious virus due to recent internet activity.” See Compl., at Attached Ex. F. At this page, users are prompted to call or click on “Contact Support” for virus removal. See id. Complainant also submits screenshots of pages suggesting phishing activity. See Compl., at Attached Ex. G. Panels have found no rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii) where the respondent has used the domain name in connection with either malware or phishing schemes. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). Accordingly, the Panel finds Respondent’s use of the disputed domain name fails to demonstrate rights in the domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent uses the disputed domain name in violation of Policy ¶ 4(b)(iv) to lure Internet users to its own site using Complainant’s likeness, in furtherance of Respondent’s phishing activity. The Panel recalls that the domain name resolves to a warning page indicating a malware threat as well as possible phishing activity. See Compl., at Attached Exs. F-G. The Panel agrees that such efforts evince Respondent’s bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Further, Complainant argues that Respondent knew of Complainant’s mark at the time of registration, further indicating bad faith. Complainant claims the fame of its mark supports such a conclusion. In Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012), the pane wrote “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” While panels have found constructive knowledge insufficient to support bad faith, the Panel here infers actual knowledge based on the notoriety of Complainant’s WELLS FARGO mark to support a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent has engaged in typosquatting, which is further evidence of bad faith. The Panel recalls that substantively the disputed domain name <wellfargo.net> removes the letter “s” from the WELLS portion of the mark. Prior panels have determined that the omission of a single letter from an otherwise incorporated mark strongly suggests typosquatting, which falls under Policy ¶ 4(a)(iii) bad faith. To illustrate, the panel in Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), in considering the resemblance of the <zonelarm.com> domain name to the ZONEALARM mark wrote, “Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” As this Panel agrees that Respondent’s <wellfargo.net> domain name amounts to a typosquatted version of the WELLS FARGO mark, the Panel finds evidence of bad faith under Policy ¶ 4(a)(iii).
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.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 17, 2014
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