Wells Fargo & Company v. Wells Fargo
Claim Number: FA0509000555027
Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. Respondent is Wells Fargo (“Respondent”), Boyenstr.46, Berlin 10115 Germany.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wellsfargoupdate.com>, registered with Schlund & Partner AG.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2005. The Complaint was submitted in both German and English.
On October 14, 2005, Schlund & Partner AG confirmed by e-mail to the National Arbitration Forum that the <wellsfargoupdate.com> domain name is registered with Schlund & Partner AG and that Respondent is the current registrant of the name. Schlund & Partner AG has verified that Respondent is bound by the Schlund & Partner AG 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 October 14, 2005, a German language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 3, 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@wellsfargoupdate.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargoupdate.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoupdate.com> domain name.
3. Respondent registered and used the <wellsfargoupdate.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company is a diversified financial services company with $422 billion in assets and 146,000 employees, providing banking, insurance, investments, mortgages and consumer finance for more than 27 million customers through over 6,000 locations. Complainant issues six million credit card accounts and was the number one originator of home mortgages in the United States in 2003. Complainant has provided financial services and related goods and services to the public under the WELLS FARGO mark and family of WELLS FARGO marks since 1852.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark (e.g., Reg. No. 779,187, issued October 27, 1964). Complainant also holds international trademark registrations for the WELLS FARGO mark in countries including Algeria, Australia, Germany, Korea and Zimbabwe.
Complainant also holds the registration for the <wellsfargo.com> domain name, where Complainant operates an Internet web site informing the public, its present and potential customers of the broad array of services it offers.
Respondent registered the <wellsfargoupdate.com> domain name on July 1, 2005. Respondent has never made any use of, or demonstrable preparations to use the domain name.
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. 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.”).
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 established rights in the WELLS FARGO mark
through registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <wellsfargoupdate.com> domain name
is confusingly similar to Complainant’s WELLS FARGO mark because the domain
name incorporates Complainant’s mark and deviates from it with the addition of
generic or descriptive term,
”update.” The mere addition of generic
or descriptive words to Complainant’s registered mark does not negate the
confusing similarity of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic
word “shop” with the complainant’s registered mark “llbean” does not circumvent
the complainant’s rights in the mark nor avoid the confusing similarity aspect
of the ICANN Policy); see also Christie’s Inc. v. Tiffany’s Jewelry Auction,
Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly
similar to the complainant's mark since it merely adds the word “auction” used
in its generic sense).
Furthermore, the addition of the generic top-level
domain name “.com” does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com>
domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <wellsfargoupdate.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove 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 assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s registered domain name is inactive and contains no content. Respondent has not made any use of the disputed domain name and it is simply a placeholder that does not contain any substantive content. The Panel finds that such nonuse is not 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 Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where “Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names” and “no commercial use is being made of the names”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question).
Moreover, Respondent has offered no evidence and there is no
evidence in the record suggesting that Respondent is commonly known by the
disputed domain name. Thus, Respondent
has not established rights or legitimate interests in the <wellsfargoupdate.com>
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 interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds
that Respondent’s passive holding of the disputed domain name constitutes registration
and use in bad faith. See Telstra
Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is
possible, in certain circumstances, for inactivity by the Respondent to amount
to the domain name being used in bad faith.”); see also lerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargoupdate.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 28, 2005
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