Wells Fargo & Company v. John Doe as Holder of Domain Name <wellzfargo.com>
Claim Number: FA0411000362108
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 John Doe as Holder of Domain Name <wellzfargo.com> (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellzfargo.com>, registered with Arsys Internet, S.L. d/b/a Nicline.com.
The undersigned certifies that she 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 November 8, 2004; the National Arbitration Forum received a hard copy of the Complaint November 10, 2004.
On November 9, 2004, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to the National Arbitration Forum that the domain name <wellzfargo.com> is registered with Arsys Internet, S.L. d/b/a Nicline.com and that a woman in North Andover, Massachusetts was the “Registrant,” “Administrative” and “Technical” contact. Arsys Internet, S.L. d/b/a Nicline.com verified that the true Respondent is bound by the Arsys Internet, S.L. d/b/a Nicline.com 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"). Complainant alleges that “The WHOIS information for <wellzfargo.com> lists the name, address and phone number of a real person who is not the registrant of the domain name but whose identify was appropriated by the true registrant (“Respondent”), for the purpose of concealing the Respondent’s true identity.” Complainant listed “John Doe” as the Respondent seeking to reach this unknown person or entity. This matter is addressed in the Findings below.
On November 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 2004, 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 firstname.lastname@example.org 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 December 17, 2004, 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.
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, <wellzfargo.com>, is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent has no rights to or legitimate interests in the <wellzfargo.com> domain name.
3. Respondent registered and used the <wellzfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Arbitrator first addresses the procedural issue of identity of the Respondent.
UDRP Rule 3(b)(v) requires Complainant to provide the following in a Complaint:
…the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a).
Complainant identified Respondent as “John Doe,” despite the WHOIS information listing the domain name registrant’s name as a woman living in Massachusetts. Complainant explained that its rationale for this action was based on the belief that the named registrant of the domain name is an innocent victim of identify theft whose name was used by the true domain name registrant to conceal its own identity. Complainant argued that using the woman’s name, address, or phone number in both the caption and the decision of this proceeding would compound injury already done to her.
Complainant further noted that the Rules define a Respondent as “the holder of a domain-name registration against which a complaint is initiated.” UDRP Rule 1. Complainant argued that the Panel should find that a “holder” of a domain name registration is not limited to the WHOIS record.
The Panel finds that the Policy and Rules anticipate that the “holder” of a domain name registration will be the individual or entity listed in the WHOIS information. Further, fundamental due process expected in any dispute, legal or otherwise, requires prior notice and an opportunity to participate in proceedings that adjudicate, arbitrate, or otherwise judge an individual’s rights or interests. The UDRP recognizes this important principle in Rule 2(a), which is cited in the aforementioned Rule 3(b)(v), and requires service providers [in this case the Forum] to employ “reasonably available means calculated to achieve actual notice to Respondent.” The Panel has found that the Forum complied with this section of the Policy and Rules.
However, in order to achieve actual notice a provider must obtain accurate information from the registrant of a domain name. The most reliable source available in obtaining accurate addresses of domain name registrants is in the actual domain name registration information given to the respective registrars. This source is a compiled database commonly known as the WHOIS information. See Trustees of the Trust Number SR-1 v. Turnberry, Scotland Golf and Leisure, FA 122224 (Nat. Arb. Forum Nov. 3, 2002) (“The register maintained by an ICANN registrar must provide accurate information as to the identity of domain registrants. The human person or other legal entity shown as the registrant must be assumed to be such by third parties seeking to ascertain a registrant’s identity by such means as a Whois search.”).
Further, the actual domain name registrant is contractually bound by the Policy, which is incorporated by reference into registration agreements and sets forth the terms and conditions in connection with a dispute between the domain name registrant and a third party. See Policy ¶ 1. In registering a domain name, the registrant is representing and warranting that the statements made in the registration agreement are both complete and accurate. See Policy ¶ 2. In this manner, a domain name registrant is responsible for its ability to be notified in the case of a potential dispute that arises. The UDRP explicitly relies on such information, as evidenced by UDRP Rule 2(a), which commands Service Providers to send the Complaint to the mailing addresses listed in the WHOIS information to achieve actual notice.
Simply because a domain name registrant may have used false or misleading information intentionally in providing data for the WHOIS information does not impose an obligation upon arbitrators and/or service providers to perform complex investigations to determine a “true” domain name registrant and its address. That burden lies with domain name registrants. A Panel’s primary objective is to “decide a complaint concerning a domain-name registration.” UDRP Rules ¶ 1. A Service Provider’s responsibility is to provide “a dispute-resolution service.” UDRP Rules ¶ 1. The Panel finds nothing in the Policy or Rules that designates panels and/or Service Providers as being responsible for conducting complex investigations to determine the identity of a true domain name registrant.
Furthermore, UDRP Rule 10(c) commands the Panel to ensure that “the administrative proceeding takes place with due expedition.”
The Panel finds that the Respondent listed in both the caption and decision should be the individual or entity listed in the WHOIS information. This holding, the Panel finds, furthers the contemplated goal of Rule 10(c) by advancing the economical considerations that support the fundamental purpose of the Policy. However, under the facts of this case, to protect the named Registrant’s future rights to privacy, it is proper to identify her as “John Doe as Holder of Domain Name <wellzfargo.com>.”
In reaching this result, the Arbitrator considered Complainant’s concern that further publicizing information about the name of the woman who lives in Massachusetts and her address, and phone number in the caption would make her vulnerable to further identity theft. The Arbitrator was not persuaded by that argument. Complainant submitted Exhibit D, which demonstrated that a search of a well-known online directory service revealed at <superpages.com> that the woman’s name, address, and phone number had already been exposed. Further, that search contains an optional link for interested Internet users that even provides driving directions to her home. This data suggests that the name, address and phone number were in the public domain and because such information was in the public domain prior to the disputed domain name being registered, the alleged unscrupulous third party would have been able to obtain the information to perpetrate its alleged fraud. Therefore, nothing in the ruling in this case will put her in a position that is different from that existing before this dispute.
The Panel also considered Complainant’s argument that including her actual name in the caption might lead the uninformed to align her name with the “acts that Respondent appears to have sought to impute to her.” Complaint at 4. The Arbitrator was persuaded by this argument. The best evidence before the Arbitrator permits findings that she is the named Registrant, Administrative and Technical contact for the disputed domain name and the dispute may be resolved using her as the Respondent. However, Complainant’s evidence also supports findings that she was not the actual person who registered the disputed domain name in Spanish and held it passively thereafter. Complainant did not show that she had engaged in any fraud upon this Complainant by the registration and in fact argued her position that she had not acted fraudulently.
The Panel finds that Complainant made a good faith effort to follow proper procedure in filing the Complaint under the name John Doe. Complainant (1) had evidence that the named Registrant was an innocent party whose identity had been stolen and who had been subjected to a fraud also perpetuated against the Complainant, and (2) had been unable to find evidence about the actual registrant due to the actual registrant’s false concealments. The Panel finds that Complainant should have proceeded under the actual name of the Registrant obtained from the WHOIS information and then petitioned the Arbitrator to keep her name confidential by using John Doe as a pseudonym. But to require a re-filing to accomplish that result is not necessary. The actual Registrant contracted under the Policy to comply with it and uphold it, and the actual Registrant made the decision to identify the woman in Massachusetts as the Registrant, Administrative and Technical contact for the domain name. It is therefore appropriate to resolve this domain name dispute using the named Registrant. Due to her future privacy concerns, it is also appropriate to identify her as “John Doe as Holder of Domain Name <wellzfargo.com>. To hold otherwise would leave those who are victims of abuse to no recourse under the Policy and Rules. The actual Registrant contracted to follow and comply with the Policy and Rules and failed to do so. See Policy ¶ 1, 2 and 2(a).
Complainant established with extrinsic proof in this proceeding that it owns rights in the WELLS FARGO mark as the result of Complainant’s numerous registrations with both U.S. and foreign authorities (e.g. Reg. No. 779,187). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, creating a presumption that is rebuttable that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).
Respondent did not file a response in this proceeding. No Respondent asserted rights to or interests in the disputed 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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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 to 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.
A complainant may establish rights in a mark pursuant to paragraph 4(a)(i) of the Policy through registration of the mark with an appropriate governmental authority. In the instant case, Complainant established with extrinsic proof in this proceeding that it has rights in the WELLS FARGO mark as the result of Complainant’s numerous registrations with both U.S. and foreign authorities (e.g. Reg. No. 779,187). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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 presumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).
A domain name that incorporates a third-party’s mark, and that is phonetically identical to that mark, has been found to be confusingly similar, pursuant to paragraph 4(a)(i) of the Policy. In the instant case, the disputed domain name <wellzfargo.com> incorporates Complainant’s WELLS FARGO mark, but has merely changed the letter “s” to the letter “z”. The Panel finds that the difference in sound between such letters does not distinguish the disputed domain name from the mark and therefore, the disputed domain name is confusingly similar to the mark because it is phonetically confusing. See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Pfizer Inc. v. Phizer's Antiques & Phizer, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark).
Therefore, the Panel finds that Complainant established ICANN Policy ¶ 4(a)(i) requiring a showing of “confusing similarity.”
Complainant established in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Respondent has not asserted any rights or legitimate interests in the domain name. Therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the domain name. See 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); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).
The Panel also finds that the evidence suggests that Respondent is not and could not be commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS registration information does not contain any information that would suggest that Respondent is commonly known by the name. See 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); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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 disputed domain name is not being used and Respondent has proffered no evidence to suggest preparations to use the name. Therefore, the Panel finds that Respondent is passively holding the domain name, which does not evidence rights to or legitimate interests in the name pursuant to paragraphs 4(c)(i) and (iii) of the Policy. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interests in the domain name); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).
Moreover, the Panel finds that Respondent engaged in the practice of typosquatting by registering a domain name that incorporates a nearly identical version of Complainant’s protected mark with the intention of redirecting consumers to an alternative website. Typosquatting permits the finding that Respondent has no rights to or legitimate interests in the disputed domain name. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (WIPO 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.'"); see also 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.").
Therefore, the Panel finds that Complainant established the provision of ICANN Policy ¶ 4(a)(ii), requiring a showing of “no rights or legitimate interests.”
Complainant alleged that Respondent acted fraudulently and in bad faith. Passive holding of a domain name has been found in previous cases to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). In the instant case, Respondent failed to develop an active website and has not demonstrated any preparations to the use the domain name. Therefore, the Panel finds that Respondent has passively held the domain name in bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical 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); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”).
Moreover, the Panel found that Respondent typosquatted in creating a domain name that was phonetically identical to Complainant’s protected mark. The Panel finds that this conduct supports findings that Respondent registered and used the disputed domain name in bad faith 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) ("Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark and stating, "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith.").
The Panel finds that Complainant met the requirements of ICANN Policy ¶ 4(a)(iii) to show “bad faith registration and use.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellzfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 30, 2004
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