Wells Fargo & Company v. Jim Matzen
Claim Number: FA0807001216163
Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah
Shinbein of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bankownedwellsfargo.com>, registered with Godaddy.com, Inc.
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 July 17, 2008; the National Arbitration Forum received a hard copy of the Complaint July 21, 2008.
On July 18, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bankownedwellsfargo.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. 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 July
24, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 13, 2008,
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@bankownedwellsfargo.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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, <bankownedwellsfargo.com>, is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent has no rights to or legitimate interests in the <bankownedwellsfargo.com> domain name.
3. Respondent registered and used the <bankownedwellsfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo
& Company, is a financial services company that provides banking,
insurance, investment, mortgage, and consumer finance services to more than 27
million customers in over 6,000 locations.
Complainant brought evidence to show thirty-one trademark registrations
with the United States Patent and Trademark Office (“USPTO”), as well as
registrations in ninety-six other countries, for the WELLS FARGO mark, which it
has allegedly used since 1852. One such
example is Registration Number 779,187 issued October 27, 1964, which is the
earliest U.S. registration evidenced by Complainant.
Respondent, Jim Matzen, registered the <bankownedwellsfargo.com> domain name June 3, 2008. The disputed domain name previously resolved to Respondent’s website located at the <caforeclosuresonline.com> domain name, and currently resolves to a parked page featuring third-party businesses that offer related banking products and services.
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."
Given 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 asserts rights to the WELLS FARGO mark through
its numerous trademark registrations in many countries, including the
The disputed domain name that Respondent registered, <bankownedwellsfargo.com>, contains Complainant’s WELLS FARGO mark in its entirety and adds the generic words “bank” and “owned” as well as the generic top-level domain (“gTLD”) “.com.” It is well established that gTLDs can be ignored under the Policy because the Policy requires them of all domain names and that portion of the disputed domain name will be set aside for purposes of this analysis. The only other changes to Complainant’s mark are the additions of generic words that describe Complainant’s business. These related additions only add to the confusing similarity of the disputed domain name. Therefore, the Panel concludes that the <bankownedwellsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Accenture Global Servs. GmbH v. Alok Mishra, D2007-0559 (WIPO June 7, 2007) (“The domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering ….”).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or legitimate interests in the <bankownedwellsfargo.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights to or legitimate interests under Policy ¶ 4(a)(ii). Based on the allegations made in the Complaint, the Panel finds that Complainant made a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent’s <bankownedwellsfargo.com> domain name previously resolved to the <caforeclosuresonline.com> domain name. Based upon the nature of that domain name, and the word “foreclosures” contained within, the Panel presumes that Respondent’s offerings attempted to compete with Complainant’s business, which provides a wide array of financial services. The <bankownedwellsfargo.com> domain name currently resolves to a parked page advertising various banking and financially-related services that seek to compete directly with Complainant’s business. It is therefore apparent that both of these uses competed with Complainant’s business for Respondent’s own commercial gain, either directly or through the accrual of click-through fees. This leads the Panel to conclude that Respondent’s use of the <bankownedwellsfargo.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
Complainant also alleges that no evidence in the record
demonstrates that Respondent is commonly known by the <bankownedwellsfargo.com> domain
name. The WHOIS information, which
identifies Respondent as “Jim Matzen,” supports this allegation, and no other
evidence in the record address this issue. Therefore, the Panel finds that Respondent is
not commonly known by the <bankownedwellsfargo.com>
domain name for the purposes of Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); see also Instron
Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent was not commonly known by
the <shoredurometer.com> and <shoredurometers.com> domain names
because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip’t as the registrant of the disputed domain name and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute).
Complainant made a prima facie showing, and Respondent did
not demonstrate rights to or legitimate interests pursuant to Policy ¶¶
4(c)(i), (ii), or (iii). Therefore, the
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent used the <bankownedwellsfargo.com> domain name to compete with Complainant, both directly and by advertising Complainant’s competitors. These uses could disrupt Complainant’s business, which evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors in the financial services industry).
Respondent’s previous and current uses of the <bankownedwellsfargo.com> domain name create a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of the disputed domain name and resolving websites. Respondent initiated these uses for his own commercial gain, and attempted to profit off the goodwill associated with Complainant’s WELLS FARGO mark. Such circumstances evidence bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel accordingly finds that Complainant satisfied the
elements of 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 <bankownedwellsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 29, 2008.
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