Wells Fargo & Company v. Thomas Vaal
Claim Number: FA0604000676432
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 Thomas Vaal (“Respondent”), Portland House, Glacis Road, Suite 2, Gibraltar, Gibraltar 00000.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info>, registered with Moniker Online Services Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.
On April 18, 2006, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names are registered with Moniker Online Services Inc. and that Respondent is the current registrant of the names. Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 April 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 9, 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@wellsfargoreversemortgage.info and postmaster@wellsfargostudentloan.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names.
3. Respondent registered and used the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, has been continuously providing financial services under the WELLS FARGO mark since 1852. Complainant currently manages over $422 billion in assets and has 146,000 employees at more than 6,000 locations around the United States. Complainant provides financial services for more than 27 million customers and has issued over six million credit card accounts.
Complainant holds numerous trademark registrations for the WELLS FARGO mark worldwide, including several registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 779,187 issued October 27, 1964; Reg. No. 838,059 issued October 31, 1967; Reg. No. 891,203 issued May 19, 1970; Reg. No. 1,131,103 issued February 19, 1980). Complainant has also registered the mark in numerous other countries, including Australia, Canada, France, Hong Kong and the United Kingdom. Complainant also holds the registration for the <wellsfargo.com> domain name (registered on April 28, 1993).
Respondent registered the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names on December 26, 2005. Both domain names at one time resolved to an Internet directory featuring links to various third party websites unrelated to Complainant. The <wellsfargoreversemortgage.info> domain name still resolves to an Internet directory, while the <wellsfargostudentloan.info> domain name does not currently resolve to any content.
Complainant contacted Respondent on March 3, 2006 regarding the disputed domain names. Respondent replied via e-mail the next day, offering to sell the disputed domain name registrations to Complainant for $199, which Complainant claims exceeds Respondent’s registration costs.
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 based on 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.
Because Complainant holds numerous trademark registrations for the WELLS FARGO mark with the USPTO and other international government authorities, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names are confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i), because each contains Complainant’s entire registered mark and merely adds a common term related to Complainant’s financial services business. In Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000), the panel held that the respondent’s four domain names were confusingly similar to the complainant’s DIOR mark because each merely added a descriptive word such as “fashion” or “cosmetics,” areas in which the complainant was highly successful. Because Respondent has also registered domain names that contain terms referring to areas in which Complainant is highly successful under the WELLS FARGO mark, the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names are confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business)
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and
legitimate interests in the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info>
domain names. Complainant must
first make a prima facie case in support of its allegations, and then
the burden shifts to Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (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 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 failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The WHOIS information lists “Thomas Vaal” as the registrant
of the disputed domain names, and there is no other evidence in the record
suggesting that Respondent is commonly known by the <wellsfargoreversemortgage.info>
and <wellsfargostudentloan.info> domain names. As a result, Respondent has not established
rights or legitimate interests in the <wellsfargoreversemortgage.info>
and <wellsfargostudentloan.info> domain names 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 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.”).
Furthermore, Respondent’s <wellsfargoreversemortgage.info>
and <wellsfargostudentloan.info> domain names have both resolved
at one point to a web page featuring links to various content unrelated to
Complainant. In WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the respondent
registered the <weddingchanel.com> domain name and used it to redirect
Internet users seeking Complainant’s services under the WEDDING CHANNEL mark to
unrelated third-party websites. The
panel presumed that the respondent received referral fees for each misdirected
Internet user and held that the respondent’s “diversionary and commercial use”
of the complainant’s WEDDING CHANNEL mark was 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).
Because Respondent has also diverted Internet users seeking
Complainant’s services to a website containing links to third-party websites,
its use of the disputed domain names provides evidence that it lacks rights and
legitimate interests in the <wellsfargoreversemortgage.info> and
<wellsfargostudentloan.info> domain names. See Seiko Kabushiki Kaisha v. CS into
Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who
are looking for products relating to the famous SEIKO mark, to a website
unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has used the <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names, which are confusingly similar to
Complainant’s WELLS FARGO mark, to redirect Internet users
seeking information on Complainant’s financial services to a website displaying
links to unrelated content. The Panel
infers that Respondent receives click-through fees for each consumer it diverts
to other websites unrelated to Complainant.
Consequently, Respondent is taking advantage of the confusing similarity
between the disputed domain names and Complainant’s WELLS FARGO mark in order
to profit from the goodwill associated with the mark, which constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003) (“Registration and use of a domain name that incorporates another's mark
with the intent to deceive Internet users in regard to the source or
affiliation of the domain name is evidence of bad faith.”); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent has offered to sell the disputed domain name registrations to Complainant for $199. The Panel finds that this price is in excess of Respondent’s out-of-pocket registration costs for the disputed domain names. Therefore, Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
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 <wellsfargoreversemortgage.info> and <wellsfargostudentloan.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 31, 2006
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