Wells Fargo & Company v. Georg Smitch
Claim Number: FA0512000608233
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 Georg Smitch (“Respondent”), Spree Street - 14, Berlin, 12439, Germany.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wells-fargo-update.com>, registered with Key-Systems Gmbh.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 9, 2005; the National Arbitration Forum received a hard copy of the Complaint December 12, 2005. The Complaint was submitted in both German and English.
On December 14, 2005, Key-Systems Gmbh confirmed by e-mail to the National Arbitration Forum that the <wells-fargo-update.com> domain name is registered with Key-Systems Gmbh and that Respondent is the current registrant of the name. Key-Systems Gmbh verified that Respondent is bound by the Key-Systems Gmbh registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 14, 2005, a German language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 2006, 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@wells-fargo-update.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <wells-fargo-update.com>, is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent has no rights to or legitimate interests in the <wells-fargo-update.com> domain name.
3. Respondent registered and used the <wells-fargo-update.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 is the issuer of six million credit card accounts, and was the number one originator of home mortgages in the United States in 2003. Complainant provided financial services and related goods and services to the public under the mark WELLS FARGO and a family of WELLS FARGO marks and has done so since 1852.
In the United States, Wells Fargo holds numerous valid registrations with the U.S. Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark including Registration Numbers 779,187; 838,059; 891,203; 1,131,103; 1,136,497; 1,138,966; 1,167,626; 1,181,279; 1,268,820; 1,273,144; 1,274,680; 2,555,996; 2,555,997; 2,561,807; 2,597,836, 2,617,850, 2,680,835, 2,680,854, 2,688,407, 2,690,610, 2,690,612, 2,694,042, 2,697,633, 2,800,535, 2,803,581, 2,808,874, 2,810,815, 2,810,816, 2,810,817, 2,810,818, 2,810,819. Complainant registered Registration Number 779,187, October 27, 1964.
Internationally, Wells Fargo holds valid registrations for the mark WELLS FARGO in the following countries: Algeria, Argentina, Aruba, Australia, Austria, Azerbaijan, Bahamas, Bahrain, Belarus, Benelux, Bermuda, Bolivia, Bosnia, Brazil, British Virgin Island, Bulgaria, Canada, Cayman Islands, Chile, China, Colombia, Costa Rica, Croatia, Czech Republic, Denmark, Dominican Republic, Egypt, El Salvador, Estonia, Federation of Russia, Fiji, Finland, France, Georgia, Germany, Greece, Guatemala, Haiti, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, Israel, Italy, Jamaica, Japan, Latvia, Lebanon, Liberia, Liechtenstein, Lithuania, Macedonia, Malaya, Mexico, Monaco, Morocco, the Netherlands Antill, New Zealand, Nicaragua, Norway, Pakistan, Papua New Guinea, Paraguay, Peru, Portugal, Romania, Sabah, Singapore, Slovakia, Slovenia, South Africa, South Korea, Spain, Sudan, Sweden, Switzerland, Syria, Taiwan, Tajikistan, Tangiers, Thailand, Trinidad & Tobago, Tunisia, Turkey, Turkmenistan, United Kingdom, Uzbekistan, Venezuela, Vietnam, Yugoslavia, and Zimbabwe.
Complainant also holds the registrations for the <wellsfargo.com> domain name. Since 1994, Complainant has been operating an Internet web site identified by the <wellsfargo.com> domain name. The web site informs the public and Complainant’s present and potential customers of the broad array of services it offers. Complainant provides many of these services to customers directly over its web site.
Respondent, Georg Smitch, registered the <wells-fargo-update.com> domain name July 14, 2005. The website associated with the <wells-fargo-update.com> domain name used to display a copy of Complainant’s banner, complete with stylized logo and Complainant’s hallmark western scene of a carriage drawn by horses. It stated: “To update your account, please enter the following information”; following this statement, the website requests the Internet user’s social security number, ATM Card Number, Account Number, and ATM PIN.
The website currently associated with the disputed domain name refers Internet users to “Sponsored Listings” that are links to competitors appropriating Complainant’s mark, such as, inter alia: “Wells Fargo Home Loan Info: Read a brief overview of Wells Fargo home loans. We compare rates from top mortgage companies.”
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 will draw such inferences as the Panel 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 Complainant to 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 with extrinsic proof in this
proceeding of its USPTO registration to demonstrate its rights in the WELLS
FARGO mark. The Panel finds that
Complainant has demonstrated rights pursuant to Policy ¶ 4(a)(i). 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.”); 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.”).
The Panel finds that the <wells-fargo-update.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark because
the only differences are the additions of hyphens and the word “update,” which
does not significantly distinguish the domain name from the mark. See Chernow Commc’ns, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to the complainant’s mark).
The Panel finds that Complainant established Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained in its entirety within the disputed domain
name. Complainant alleged that Respondent has no such rights or interests. In fact, Respondent appropriated
Complainant’s trademark to solicit personal information from Complainant’s
customers, presumably to gain access to the customers’ accounts. This kind of “phishing” scam is not a bona
fide offering of a good or service pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar.
29, 2004) (finding that using a domain name in a fraudulent scheme to deceive
Internet users into providing their credit card and personal information is not
a bona fide offering of goods or services
nor a legitimate noncommercial or fair use); Capital One Fin. Corp. v. Howel,
FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to
redirect Internet users to a website that imitated the complainant’s credit
application website and attempted to fraudulently acquire personal information
from the complainant’s clients was not a bona fide offering of goods or
services or a legitimate noncommercial or fair use).
The Panel finds that nothing in the record, including the
WHOIS registration information, demonstrates that Respondent is commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant established Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith. The previous website associated with the
disputed domain name copied the look-and-feel of Complainant’s website to
solicit personal information from Complainant’s customers. The Panel infers that Respondent changed the
content associated with the disputed domain name because Complainant put it on
notice of this dispute. The Panel finds
that Respondent’s phishing scam is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004)
(finding bad faith registration and use because the respondent used the domain
name to redirect Internet users to a website that imitated the complainant’s
website and to fraudulently acquire personal information from the complainant’s
clients); Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum
May 3, 2004) (finding that using a domain name that “is confusingly similar to
Complainant’s mark, redirects Internet users to a website that imitates
Complainant’s billing website, and is used to fraudulently acquire personal
information from Complainant’s clients” is evidence of bad faith registration
and use).
Further, the current website associated with the disputed
domain name appropriates Complainant’s mark to refer Internet traffic to
competitors who also appropriate Complainant’s mark. The Panel finds that Respondent’s appropriation of the WELLS
FARGO mark to refer Internet traffic to competitors 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 that the respondent registered the domain
name in question to disrupt the business of the complainant, a competitor of
the respondent); Gen. Media Commc’ns,
Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad
faith where a competitor of the complainant registered and used a domain name
confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic
web site).
The Panel finds that Complainant established 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 <wells-fargo-update.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 23, 2006.
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