Wells Fargo & Company v. Hank Grossman
Claim Number: FA1006001330653
Complainant is Wells
Fargo & Company (“Complainant”), represented by David A. W. Wong, of Barnes & Thornburg LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2010.
On June 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@wellsfargochampionship.com, wellsfargochampionship.info, and thewellsfargochampionship.com. Also on June 29, 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 July 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names.
3. Respondent registered and used the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified financial services company with $422 billion in assets and 146,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 bank locations. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark (e.g., Reg. No. 779,187 registered October 27, 1964).
Respondent, Hank Grossman, registered the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names on May 6, 2010. The disputed domain names resolve to directory websites that display links to third-party websites, some of which directly compete with Complainant’s business.
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 asserts rights in the WELLS FARGO mark through
its numerous registrations of the mark with the USPTO (e.g., Reg. No. 779,187 registered October 27, 1964). The Panel finds these registrations
sufficiently establish Complainant’s rights in the WELLS FARGO mark pursuant to
Policy ¶ 4(a)(i).
Complainant contends Respondent’s <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names are confusingly similar to its WELLS FARGO mark. Respondent fully incorporates Complainant’s mark in all of the disputed domain names and then merely deletes the space between the two words in the mark. Respondent also affixes the generic term “championship” to Complainant’s mark in each of the disputed domain names. In addition, Respondent adds the article “the” to Complainant’s mark in the <thewellsfargochampionship.com> domain name. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the <wellsfargochampionship.com> and <thewellsfargochampionship.com> domain names and the gTLD “.info” to Complainant’s mark in the <wellsfargochampionship.info> domain name. The Panel finds these slight alterations and additions do not render Respondent’s disputed domain names distinct from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds Respondent’s <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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.”). Although Respondent has failed to respond, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information lists “Hank Grossman” as the registrant of the disputed domain names. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names direct Internet users to generic landing pages that display links to third-party websites, and that some of these sites provide various bank related products and services. Screen shots of the resolving websites show websites that list numerous links to third-party websites. Some of these links have names like “Bank of America Checking,” “Local Banks,” and “Bank Account & ATM Card.” The Panel presumes Respondent profits from this use through the receipt of pay-per-click fees. Consequently, the Panel finds Respondent’s use of the disputed domain names to resolve to directory websites that feature links to third-party websites, many of which compete with Complainant’s business, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
As previously discussed, Respondent’s disputed domain names are confusingly similar to Complainant’s WELLS FARGO mark. Furthermore, the resolving websites list links to third-parties that directly compete with Complainant’s business. The Panel finds Respondent’s use of confusingly similar domain names to provide links to Complainant’s competitors disrupts Complainant’s business. Therefore, the Panel finds this behavior demonstrates registration and use in bad faith 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues Respondent registered and is using the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names to intentionally attract Internet users, for commercial gain, to its resolving websites by creating a likelihood of confusion with Complainant’s WELLS FARGO mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. The Panel agrees and finds Respondent uses confusingly similar disputed domain names to profit from pay-per-click fees. Therefore, the Panel concludes this behavior provides further evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also 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)(iv) 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <wellsfargochampionship.com>, <wellsfargochampionship.info>, and <thewellsfargochampionship.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 2, 2010
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