Wells Fargo & Company v. Koki Mihael
Claim Number: FA0512000605221
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 Koki Mihael (“Respondent”), Budapester Strasse 21-29, Berlin 10787, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wels-fargo.net>, registered with UnitedDomains.de.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 8, 2005. The Complaint was submitted in both German and in English.
On December 13, 2005, UnitedDomains.de confirmed by e-mail to the National Arbitration Forum that the <wels-fargo.net> domain name is registered with UnitedDomains.de and that Respondent is the current registrant of the name. UnitedDomains.de has verified that Respondent is bound by the UnitedDomains.de 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 December 13, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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:
Complainant is a diversified financial services company providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations.
Complainant holds numerous valid registrations for the WELLS FARGO service mark, dating from as early as 1964, with the U.S. Patent and Trademark Office (“USPTO”).
Respondent is not now and never has been a licensee of Complainant.
Respondent registered the <wels-fargo.net> domain name on July 7, 2005.
Soon after the domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a “doppelganger” (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing their login identification, social security numbers, and/or account information and Personal Identification Numbers that could give Respondent the ability to transfer money out of an innocent user’s bank account, or attempt to apply for loans or other credit in the user’s name.
After Complainant objected to this activity, the described website became non-functional, and Respondent is not now actively using the domain name.
Respondent’s <wels-fargo.net> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights or legitimate interests in the <wels-fargo.net> domain name.
Respondent registered and uses the <wels-fargo.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used in bad faith.
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:
a. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
b. Respondent has no rights or legitimate interests in respect of the domain name; and
c. the domain name has been registered and is being used in bad faith.
Complainant offers its USPTO registration as proof that it has rights in the WELLS FARGO mark. The Panel accepts this proof and finds that Complainant has established rights in this 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 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.”
The Panel also finds that Respondent’s <wels-fargo.net> domain name is confusingly similar to Complainant’s WELLS FARGO mark because it merely eliminates the letter “l” and adds a hyphen, which does not significantly distinguish the domain name from the mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark, but nevertheless renders the domain name confusingly similar to the complainant’s marks; see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003): “The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”
Accordingly, the Panel concludes that Complainant has met the proof requirements of Policy ¶ 4(a)(i).
Complainant asserts, and Respondent does not deny, that Respondent is not its licensee. Complainant further asserts, and Respondent does not deny, that Respondent is not now actively using the disputed domain name. The Panel therefore finds that Respondent is not making a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name within the meaning of Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003): “Respondent's passive holding of the <aolfact.com> domain name … is evidence that Respondent lacks rights and legitimate interests in the domain name.” 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 makes no use of the domain name in question.
The Panel also finds that there is nothing in the record, including the WHOIS registration information, which demonstrates that Respondent is commonly known by the disputed domain name as contemplated in Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), citing the absence of any indication in Respondent’s WHOIS information that Respondent is ‘commonly known by’ the disputed domain name” as a factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), finding that the respondent does not have rights in a domain name where it is not known by the mark.
For these reasons, the Panel determines that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Complainant asserts, without contradiction from Respondent, that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a “doppelganger” (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers that could give Respondent the ability to transfer money out of an innocent user’s bank account, or attempt to apply for loans or other credit in the user’s name.
The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii). It is, in fact, a species of misconduct directly denounced in Policy ¶ 4(b)(iv) as constituting bad faith registration and use of a contested domain name.
That Respondent is not now actively using the subject domain name in the manner originally intended, or in fact using it at all, does not change this result. 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), finding that the 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); and Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000).
Moreover, it is evident that Respondent registered the contested domain name with either actual or constructive knowledge of Complainant’s rights in the WELLS FARGO mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such actual or constructive knowledge evidences bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wels-fargo.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 16, 2006
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