Wells Fargo & Company v. Cayman
Trademark Trust
Claim
Number: FA0501000396377
Complainant is Wells Fargo & Company (“Complainant”),
represented by Adam Lindquist Scoville, of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is Cayman
Trademark Trust (“Respondent”), P.O. Box 908 George Town, Grand Caym GT KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wellsfago.com>, registered with Bulkregister,
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.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
30, 2004; the National Arbitration Forum received a hard copy of the Complaint
on January 3, 2005.
On
January 4, 2005, Bulkregister, Llc. confirmed by e-mail to the National Arbitration
Forum that the domain name <wellsfago.com> is registered with Bulkregister,
Llc. and that Respondent is the current registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
January 4, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 24, 2005 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@wellsfago.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 31,2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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 makes the following assertions:
1. Respondent’s <wellsfago.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <wellsfago.com> domain name.
3. Respondent registered and used the <wellsfago.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, has been providing banking and other financial
services to the public under the WELLS FARGO mark since 1852. Complainant holds numerous trademark
registrations with the United States Patent and Trademark Office for the WELLS
FARGO mark (e.g., Reg. No. 779,187, issued October 27, 1964). Additionally,
Complainant also holds international trademark registration rights for the
WELLS FARGO mark in numerous countries from Algeria to Zimbabwe. Complainant has also owned and operated the
<wellsfargo.com> domain name since 1994.
Complainant’s website informs the public and Complainant’s present and
potential clients of the variety or services it offers.
Respondent
registered the <wellsfago.com> domain name on June 9, 2001. Respondent is using the disputed domain name
to display a page of paid advertising links offering various financial services
and products such as loans, checking accounts, debt consolidation and
mortgages.
Additionally,
Respondent uses the domain name in conjunction with Google’s “AdSense for
Domains” program, which compensates website owners for the placement of Google
advertisements on their web pages.
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.
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
established that it has rights to the WELLS FARGO mark by providing evidence of
its registration with the United States Patent and Trademark Office. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <wellsfago.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark because
the domain name incorporates Complainant’s mark in its entirety and deviates
from it only by the omission of the letter “r” and the space between the two
words within Complainant’s mark. These
minor differences do not negate the confusing similarity of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See
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); see
also State Farm Mut. Auto. Ins. Co.
v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding
that the domain name <statfarm.com> is confusingly similar to
Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v.
Seocho, FA 103879 (Nat. Arb. Forum
Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to Complainant’s COMPAQ mark because the omission of the
letter “a” in the domain name does not significantly change the overall
impression of the mark); see also Wembley Nat’l Stadium Ltd. v.
Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name
<wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
alleges that Respondent has no rights or legitimate interests in the <wellsfago.com>
domain name that contains Complainant’s WELLS FARGO mark. Once Complainant makes a prima facie case
in support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion
by Complainant that Respondent has no rights or legitimates interest is
sufficient to shift the burden of proof to Respondent to demonstrate that such
a right or legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Moreover, where
Complainant makes a prima facie showing and Respondent does not respond,
the Panel may accept all reasonable allegations and inferences in the Complaint
as true. See 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.”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of the Complaint to be deemed
true).
Respondent is
using the <wellsfago.com> domain name to display a web page full
of paid advertising links offering various competing financial services similar
to Complainant’s services, including loans, checking accounts, debt
consolidation and mortgages.
Respondent’s use of a domain name confusingly similar to Complainant’s
WELLS FARGO mark to host a commercial website that offers similar financial
services is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t
would be unconscionable to find a bona fide offering of services in a
Respondent’s operation of web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business”); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that Respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Additionally,
Respondent uses the domain name in conjunction with Google’s “AdSense for Domains”
program, which compensates website owners for the placement of Google
advertisements on their web pages.
Respondent’s commercial use of the <wellsfago.com> domain
name further evidences Respondent’s lack of rights and legitimate interests in
the disputed domain name. See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (holding that Respondent’s use of confusingly
similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users
to websites featuring pop-up advertisements was not a bona fide offering of
goods or services); see also Yahoo! Inc. v. Web Master, FA
127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with Complainant, was not a bona fide offering of goods or
services).
Respondent’s
registration and use of <wellsfago.com>, which is a common
misspelling of Complainant’s mark, indicates the common practice of
typosquatting. The Panel finds
Respondent’s use of a domain name that merely omits the letter “r” from
Complainant’s mark constitutes typosquatting and demonstrates Respondent’s lack
of rights and legitimate interests in the <wellsfago.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and
<ltdcommodaties.com> disputed domain names were typosquatted
versions of Complainant's LTD COMMODITIES mark and "Respondent's
'typosquatting' is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names"); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003) (finding that Respondent lacked rights and
legitimate interests in the disputed domain names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com> website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c'").
Furthermore,
Respondent did not offer any evidence, and the record does not suggest that
Respondent is commonly known by the <wellsfago.com> domain
name. Additionally, Respondent is not a
licensee of Complainant and is not authorized under the expressed permission of
Complainant to operate under the WELLS FARGO mark. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate
interests in domain names because it is not commonly known by Complainant’s
marks and Respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or fair
use).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent
intentionally registered a domain name containing Complainant’s well-known mark
and did so for Respondent’s commercial gain.
Respondent’s <wellsfago.com> domain name diverts Internet
users searching under Complainant’s WELLS FARGO mark to Respondent’s commercial
website. The Panel finds that
Respondent receives click-through fees through use of the domain name by
inverting Internet users searching for Complainant to Complainant’s
competitors. The Panel finds that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv). See 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); see
also Kmart v. Kha, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
The Panel also
finds that Respondent’s use of a domain name that is a misspelled version of
Complainant’s WELLS FARGO mark constitutes typosquatting and evidences
Respondent’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(a)(iii). See
Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan.
21, 2003) (“Typosquatting is the intentional misspelling of words with 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 Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum
Oct. 15, 2003) (Respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of
Complainant's ZONEALARM mark.).
Furthermore,
Respondent registered the domain name for the purpose of disrupting
Complainant’s business by redirecting Internet traffic intended for Complainant
to Complainant’s competitor’s. The
Panel finds that by creating confusion around Complainant’s mark, Respondent is
attempting to disrupt Complainant’s business.
Respondent’s use of Complainant’s mark to sell goods similar to
Complainant’s goods and services is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered the names primarily for the
purpose of disrupting Complainant's business); see also SR Motorsports v. Rotary Performance, FA
95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the
domain names were registered for the primary purpose of disrupting the
competitor's business when the parties are part of the same, highly specialized
field).
The Panel finds
that Complainant fulfilled 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 <wellsfago.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon.
Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 14, 2005