Wells Fargo & Company v. Isaac Goldstein
Claim Number: FA1004001321448
Complainant is Wells Fargo & Company (“Complainant”), represented by David
A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwwellsfargo.com>, registered with Columbiadomains LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2010.
On April 28, 2010, Columbiadomains LLC confirmed by e-mail to the National Arbitration Forum that the <wwwwellsfargo.com> domain name is registered with Columbiadomains LLC and that Respondent is the current registrant of the name. Columbiadomains LLC has verified that Respondent is bound by the Columbiadomains LLC 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 May 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwwellsfargo.com. Also on May 5, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <wwwwellsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wwwwellsfargo.com> domain name.
3. Respondent registered and used the <wwwwellsfargo.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 providing banking, insurance, investments, mortgages and consumer finance to customers worldwide. Complainant owns multiple trademark registrations for the WELLS FARGO mark in countries around the world, including with the Hong Kong Trade Marks Registry (e.g., No. 1973B0960 issued September 6, 1973).
Respondent, Isaac Goldstein,
registered the <wwwwellsfargo.com>
domain name on February 11, 2010. The
disputed domain name resolves to a generic portal site featuring third-party
advertising links to providers of various bank related products and services in
competition with Complainant, as well as other unrelated websites.
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:
(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 owns multiple trademark registrations for the WELLS FARGO mark in countries around the world, including with the Hong Kong Trade Marks Registry (e.g., No. 1973B0960 issued September 6, 1973). The Panel finds that Complainant’s ownership of multiple trademark registrations worldwide strongly establishes Complainant’s rights in the WELLS FARGO mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant alleges that Respondent’s <wwwwellsfargo.com> disputed domain
name is confusingly similar to Complainant’s WELLS FARGO mark because the only
differences between the two are the “www” prefix and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that adding the “www” prefix without separating it from Complainant’s with a
period fails to prevent confusing similarity under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum
Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not possess rights and legitimate interests in the disputed domain names. After putting forth a prima facie against Respondent, the burden shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain name. The Panel finds that Complainant adequately proved its allegations to establish a prima facie case, and the Panel can infer from Respondent’s lack of response that Respondent does not dispute Complainant’s assertion that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant argues that Respondent is not commonly known by the <wwwwellsfargo.com> disputed domain name and that Respondent is not licensed to use Complainant’s mark in the disputed domain name. The Panel finds that the WHOIS information lists the registrant of the disputed domain name as “Issac Goldstein,” which is evidence that Respondent is not commonly known by the disputed domain name and lacks rights and interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant asserts that Respondent’s <wwwwellsfargo.com> disputed domain
name resolves to a generic directory website displaying links to other
providers of services and products in competition with Complainant as well as
various unrelated websites. The Panel
finds that such directory sites with links to both competing and unrelated
sites are not evidence of a bona fide offering of goods or services or a
legitimate noncommercial or fair use in accordance with Policy ¶¶ 4(c)(i) or
4(c)(iii). See Expedia,
Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s
use of the <expediate.com> domain name to redirect Internet users to a
website featuring links to travel services that competed with the complainant
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)); see also Royal Bank of Scotland Grp plc et al. v.
Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a
commercial web directory displaying various links to third-party websites was
not a use in connection with 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), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites).
Complainant argues that Respondent’s use of the common web address prefix “www” without the period separating the prefix from the rest of the domain name attempts to take advantage of a common typographical mistake made by Internet users seeking Complainant’s website. The Panel finds Respondent’s registration of the disputed domain name containing such a mistake constitutes typosquatting, which is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s website resolving
from the <wwwwellsfargo.com>
disputed domain name contains multiple links to providers of banking and
related services that compete with Complainant’s services and products. The Panel finds that using the disputed
domain name to advertise links to Complainant’s competitors reveals an intent
to disrupt Complainant’s business, signaling bad faith registration and use
under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by
using the disputed domain names to operate a commercial search engine with
links to the products of the complainant and to complainant’s competitors, as
well as by diverting Internet users to several other domain names); see also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant alleges that
Respondent registered the <wwwwellsfargo.com>
disputed domain name because it is confusingly similar to Complainant’s WELLS
FARGO mark, would likely attract many of Complainant’s customers, and would
create confusion as to the affiliation between Complainant and Respondent. The placement of the links to Complainant’s
competitors on Respondent’s resolving website presumably benefits Respondent as
it receives click-through revenue when Internet users click on any of the
links. The Panel finds Respondent’s
efforts to attract Complainant’s customers and subsequently profit from the
confusion created demonstrate bad faith registration and use according to
Policy ¶ 4(b)(iv). See
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar <wwwwellsfargo.com> disputed domain name. The Panel finds this typosquatting to be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
The Panel finds 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 <wwwwellsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 9, 2010
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