Wells Fargo & Company v. Joe Martin / MacPC Geek
Claim Number: FA1710001754049
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Joe Martin / MacPC Geek (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wfabboutdowing.com>, registered with GoDaddy.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 16, 2017; the Forum received payment on October 18, 2017.
On October 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wfabboutdowing.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 October 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2017 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@wfabboutdowing.com. Also on October 19, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions.
Complainant is a diversified financial services company with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations. Complainant registered the WF (Reg. No. 3,644,066, registered Jun. 23, 2009) and ABBOT DOWNING (Reg. No. 4,298,867, registered Mar. 5, 2013) marks with United States Patent and Trademark Office (“USPTO”). See Compl. Ex. D. Respondent’s <wfabboutdowing.com> domain name is confusingly similar to Complainant’s marks because it combines the marks, misspells them, and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <wfabboutdowing.com> domain name. There is no evidence in the WHOIS information to suggest that Respondent is known by the <wfabboutdowing.com> domain name. See Compl. Ex. B (listing the registrant as Joe Martin). Additionally, Respondent has never received a license from Complainant to use the WF and ABBOT DOWNING marks. Additionally, Respondent has never made any use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is attempting to pass off as Complainant by using the disputed domain name in a fraudulent email scheme and impersonate Complainant and its financial services. See Ex. E & F.
Respondent is using the domain name to intentionally attempt to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website. Respondent has also used the domain name to engage in fraudulent activity through email communications, both as an email address and in false statements of affiliation with Complainant. See Compl. Ex. F. Further, Respondent is engaging in typosquatting by misspelling Complainant’s marks in the domain name. Additionally, the disputed domain name no longer resolves to an active website. See Compl. Ex. H. Finally, Respondent registered the <wfabboutdowing.com> with actual/constructive knowledge of Complainant and its rights to the WF and ABBOT DOWNING marks given the distinctive nature of the marks, the international fame, and the slight misspelling of both marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that conducts a diversified financial services business.
2. Complainant has established its trademark rights to the WF and ABBOT DOWNING marks by their registration with the United States Patent and Trademark Office (“USPTO”), Reg. No. 3,644,066, registered Jun. 23, 2009 in the case of the WF mark and Reg. No. 4,298,867, registered Mar. 5, 2013 in the case of the ABBOT DOWNING mark.
3. Respondent registered the <wfabboutdowing.com> domain name on September 29, 2017.
4. Respondent has used the domain name in an attempt to pass itself off as Complainant by using the disputed domain name in a fraudulent email scheme and to impersonate Complainant and its financial services. Respondent has also engaged in typosquatting and phishing.
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(f), 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered its WF and ABBOT DOWNING marks with the USPTO as early as 2009 and 2013 respectively (e.g., Reg. No. 3,644,066, registered Jun. 23, 2009 and Reg. No. 4,298,867, registered Mar. 5, 2013). See Compl. Ex. D. Registration of a mark with the USPTO sufficiently establishes the required rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds that Complainant has established its rights in the WF and ABBOT DOWNING marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WF and ABBOT DOWNING marks. Complainant argues that Respondent’s <wfabboutdowing.com> domain name is confusingly similar to Complainant’s marks because it combines the WF and ABBOT DOWNING marks, misspells ABBOT DOWNING as “abboutdowing,” and adds the gTLD “.com.” Combining marks, misspellings, and the addition of a gTLD do not meaningfully distinguish domain names from a complainant’s marks. See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Accordingly, the Panel finds that the additions made to Complainant’s marks in the disputed domain name render the domain name confusingly similar for the purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s WF and ABBOT DOWNING marks and has used them in their entirety in the domain name, having engaged in misspelling of ABBOTT DOWNING as “abboutdowing”;
(b) Respondent registered the <wfabboutdowing.com> domain name on September 29, 2017;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <wfabboutdowing.com> domain name as Respondent has not been commonly known by the <wfabboutdowing.com> domain name. The WHOIS information of record lists Respondent as “Joe Martin,” which does not serve to show that Respondent has been commonly known by the domain name. See Compl. Ex. B. Further, Complainant claims it has never licensed or otherwise permitted Respondent to use the WF and ABBOT DOWNING marks. A complainant may use these arguments to establish a respondent’s lack of rights and legitimate interests. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The Panel thus finds Respondent is not commonly known by the disputed domain name or Complainant’s marks, and has no rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii);
(e) Complainant argues that Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Rather, Complainant alleges, Respondent attempts to pass itself off as Complainant by using the disputed domain name to impersonate Complainant and its services. See Compl. Ex. E & F. Using a confusingly similar domain name to pass a respondent off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Complainant provides a screenshot of Respondent’s use of the domain name, which shows that Respondent makes use of Complainant’s marks and designs, while also impersonating Complainant’s employees in a fraudulent scheme to obtain users’ information. See Compl. Ex. E & F. Using a confusingly similar domain name to further phishing schemes can also be used as evidence of lacking rights and legitimate interests. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Therefore, the Panel finds that Respondent’s attempts to pass itself off as Complainant in furtherance of a fraudulent email scheme, demonstrates a lack of rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and continues to use the <wfabboutdowing.com> domain name in bad faith. Complainant argues that the disputed domain name attracts internet users to Respondent’s website for commercial gain, creating a likelihood of confusion that Respondent is affiliated with Complainant. Using a confusingly similar domain name to benefit commercially from the goodwill associated with a complainant’s mark can show bad faith registration and use. See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant alleges that if the content on the domain name’s resolving webpage is legitimate, then the financial services offered directly compete with Complainant’s business. See Compl. Ex. E & G. Therefore, the Panel determines that Respondent commercially benefitted from Complainant’s marks, thus registered and is using the <wfabboutdowing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent’s current use of the domain name is inactive and that Respondent engages in typosquatting by misspelling ABBOT DOWNING as “abboutdowing.” Inactively holding a domain name and engaging in typosquatting can evidence bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant provides a screenshot of the resolving webpage, which appears to be a parked page displaying various links, which Complainant claims is not an active use of the domain name. See Compl. Ex. H. Accordingly, the Panel finds that Respondent’s inactive and typosquatting use of the disputed domain name is bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent engages in a phishing scheme to obtain users’ information fraudulently. Using a confusingly similar domain name to phish for personal or financial information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides an email chain between an alleged victim of the scam, as well as a letter sent by Respondent to the individual. See Compl. Ex. F. Accordingly, the Panel concludes that Complainant has sufficiently demonstrated Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Fourthly, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s marks. Prior UDRP decisions have generally declined to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the WF and ABBOT DOWNING marks given the distinctive nature of the marks, their international fame, and the slight misspelling of the ABBOT DOWNING mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WF and ABBOT DOWNING marks and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wfabboutdowing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 16, 2017
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