Wells Fargo and Company v. Conquest
Business Ventures Inc
Claim
Number: FA0505000473220
Complainant is Wells Fargo and Company (“Complainant”),
represented by Ester Martin Maillaro of Faegre and Benson, LLP,
1900 Fifteenth Street, Boulder, CO 80302-5414.
Respondent is Conquest Business
Ventures Inc (“Respondent”), P.O. Box 837, Willemstad, Curacao, AZ 00114.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wellsfargomn.com>, registered with Go
Daddy Software, 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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 9, 2005.
On
May 9, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <wellsfargomn.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. 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
May 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 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@wellsfargomn.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
June 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, 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." 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 <wellsfargomn.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <wellsfargomn.com> domain name.
3. Respondent registered and used the <wellsfargomn.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Wells Fargo and Company, is a diversified
financial services company that provides banking, insurance, investments,
mortgages, and consumer finance services.
Complainant holds numerous registrations with various international
authorities as well as with the United States Patent and Trademark Office (“USPTO”)
for the WELLS FARGO mark (including Reg. No. 779,187 issued October 27, 1964;
Reg. No. 838,059 issued October 31, 1967; and Reg. No. 891,203 issued May 19,
1970).
Complainant has more than 27 million customers and over 6,000
locations. Complainant has issued six
million credit card acccounts and, in 2003, was the number one originator of
home mortgages in the United States.
Complainant owns a registration for the <wellsfargo.com> domain
name, where it has operated a website since 1994. Complainant’s website provides information about Complainant’s
numerous services and also allows customers to use many of these services
directly on the website.
Respondent registered the <wellsfargomn.com> domain name on November 26, 2004. The domain name resolves to a website that
displays numerous links to websites that offer services that compete with those
of Complainant. Each link at the
website directs Internet users to a competitor’s website via the <googlesyndication.com>
domain name, which is evidence that the website uses Google’s “AdSense for
Domains” program. Through this program,
Respondent is compensated for placing advertisements on its website.
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 has
submitted evidence that it owns registrations for the WELLS FARGO mark with the
USPTO. Registration with a government
authority establishes presumptive rights in Complainant’s mark under the
Policy. Thus, without any response from
Respondent, there is no evidence to dispute Complainant’s prima facie
case of rights. Thus, the Panel finds
that Complainant has rights in the WELLS FARGO mark for the purposes of Policy
¶ 4(a)(i). See 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 which the respondent has the burden of refuting); see also 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.”).
The <wellsfargomn.com>
domain name registered by Respondent includes Complainant’s WELLS FARGO mark in
its entirety and deviates only with the addition of the geographic abbreviation
“mn,” which is the postal code for the state of Minnesota. Simply adding a geographic abbreviation or
other letters is insufficient to negate the confusing similarity between the
disputed domain name and Complainant’s mark.
Thus, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s registered mark pursuant to Policy ¶ 4(a)(i). See Anheuser-Busch Inc. v.
BargainName.com, FA 338434 (Nat. Arb. Forum Nov. 29, 2004) (finding the
<buschgardensva.com> domain name confusingly similar to the complainant’s
BUSCH GARDENS mark); see also Kelson
Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that
<kelsonmd.com> is identical or confusingly similar to Complainant’s
federally registered KELSON mark).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent has
failed to submit a response, which entitles the Panel to accept all reasonable
allegations and inferences in the Complaint as true unless clearly contradicted
by the evidence. 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
contends that Respondent does not have rights or legitimate interests in the <wellsfargomn.com>
domain name, which contains Complainant’s WELLS FARGO mark in its
entirety. Since Complainant has made a prima
facie case in support of its allegations, the burden shifts to Respondent
to make a showing of rights or legitmate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
because Respondent failed to respond to Complainant’s assertions and to provide
evidence to contradict these assertions, Respondent has failed to meet its
burden. Therefore, the Panel concludes
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
the complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no rights
or legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); 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).
The <wellsfargomn.com>
domain name resolves to a website that displays numerous paid advertising links
to various financial services products in competition with Complainant. Complainant has provided evidence that
Respondent is paid for redirecting users through the featured links. The Panel holds that Respondent’s use of a
domain name that is confusingly similar to Complainant’s well-known WELLS FARGO
mark to divert Internet users interested in Complainant’s financial products
and services to a website that displays links to competing products and
services is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that the respondent’s diversionary use of the complainant’s mark
to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Black & Decker Corp. v. Clinical Evaluations,
FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of
the disputed domain name to redirect Internet users to commercial websites,
unrelated to the complainant and presumably with the purpose of earning a
commission or pay-per-click referral fee did not evidence rights or legitimate
interests in the domain name).
Complainant
asserts that there is no evidence that Respondent is commonly known by the <wellsfargomn.com>
domain name and that the WHOIS information, which is the only potential
evidence of Respondent’s identity, indicates that Respondent is actually known
as “Conquest Business Ventures Inc.”
The Panel has received no response from Respondent to contradict
Complainant’s claims. Thus, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb.
Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant is
in the financial services industry, and the <wellsfargomn.com>
domain name diverts Internet users to a website that displays links to
Complainant’s competitors in various areas of that industry. Respondent’s use of a domain name that is
confusingly similar to Complainant’s registered WELLS FARGO mark to redirect
Complainant’s existing and potential customers to a website that advertises
Complainant’s competitors constitutes disruption and is evidence of bad faith
registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
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 the complainant's marks suggests that the respondent, the
complainant’s competitor, registered the names primarily for the purpose of
disrupting the complainant's business).
The <wellsfargomn.com>
domain name is being used to attract Internet users who are interested in
finding Complainant’s WELLS FARGO products and services by confusing them as to
Complainant’s affiliation with the advertisements for competing services on the
resulting website. Furthermore,
Complainant has provided evidence that Respondent receives compensation for
diverting Internet users through its website to the third-party advertisers. Thus, the Panel concludes that Respondent’s
use of the disputed domain name to derive commercial benefit through a
likelihood of confusion of Internet users is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the
respondent registered and used an infringing domain name to attract users to a
website sponsored by the respondent); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. 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).
The Panel finds
that Complainant has satisfied 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 <wellsfargomn.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
June 20, 2005
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