Wells Fargo & Company v. ARMA Bilisim Reklam Tur. Ins. San. Tic. Ltd. Sti. . c/o Osman Atasoy
Claim Number: FA1007001336599
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 <wlsfrg.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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 July 21, 2010.
On July 21, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <wlsfrg.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. D/B/A PUBLICDOMAINREGISTRY.COM 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 July 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@wlsfrg.com by e-mail. Also on July 28, 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 August 22, 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 "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 <wlsfrg.com> domain names is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wlsfrg.com> domain name.
3. Respondent registered and used the <wlsfrg.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, offers financial
services under its WELLS FARGO mark.
Complainant offers its services in physical banks throughout the
Respondent registered the <wlsfrg.com> domain name on June 11, 2009. The disputed domain name resolves to a website with third-party hyperlinks to financial services that directly compete with the financial services offered by Complainant.
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.
Previous panels have held that a federal trademark registration is sufficient for a complainant to establish rights in a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to 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 holds numerous trademark registrations with the USPTO (e.g., Reg. No. 779,187 issued October 27, 1964) and TPE (e.g., Reg. No. 126,253 issued February 7, 1991).for its WELLS FARGO mark. Therefore, the Panel finds that Complainant has established rights in its WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <wlsfrg.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark pursuant
to Policy ¶ 4(a)(i).
The disputed domain name removes the space separating the terms of
Complainant’s mark. The disputed domain
name further removes the vowels “e,” “a,” and “o” and the letter “l” from
Complainant’s mark creating a misspelled version of Complainant’s WELLS FARGO
mark. Finally, the disputed domain name
appends the generic top-level domain (“gTLD”) “.com.” Previous panels have held the removal of a
space and letters from a complainant’s mark coupled with the addition of a gTLD
fail to sufficiently distinguish a disputed domain name from a complainant’s
mark. See U.S. News & World Report, Inc. v.
Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19,
2006) (finding that the <myspce.com> domain name was confusingly similar
to the complainant’s MYSPACE mark and the slight difference in spelling did not
reduce the confusing similarity); see
also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002)
(“The misspelling of a famous mark does not diminish the confusingly similar
nature between the marks and the disputed domain names.”); see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <wlsfrg.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent does not own any trademark or intellectual property rights in the <wlsfrg.com> domain name. Complainant asserts that Respondent is not a licensed user of Complainant’s WELLS FARGO mark. Complainant claims that there is no evidence in the record that Respondent is commonly known by the disputed domain name. The Panel determines that the WHOIS information does not indicate that Respondent is commonly known by the <wlsfrg.com> domain name. Respondent has failed to respond to Complainant’s assertions and has failed to present any evidence that would contradict the Panel’s findings. Thus, the Panel determines that Respondent is not commonly known by the <wlsfrg.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).
Respondent’s <wlsfrg.com> domain name resolves to a website that contains hyperlinks to third-party competitors of Complainant in the financial services industry. The Panel infers that Respondent commercially profits from these hyperlinks. Therefore, the Panel concludes that Respondent’s use of the <wlsfrg.com> domain name for such a purpose is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <wlsfrg.com> domain name to resolve to a website that features a list of third-party hyperlinks, which resolve to Complainant’s competitors in the financial services industry. Internet users interested in Complainant’s banking and financial services may purchase competing services due to Respondent’s use of the confusingly similar disputed domain name. Consequently, the Panel determines that Respondent’s use of the <wlsfrg.com> domain name disrupts Complainant’s financial business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel presumes Respondent receives click-through fees
from the aforementioned hyperlinks or profits in some other way from its use of
the <wlsfrg.com> domain name.
Complainant argues that Internet users may become confused as to
Complainant’s association with the disputed domain name and resolving
website. Complainant claims that
Respondent attempts to increase the likelihood of confusion by including
Complainant’s WELLS FARGO mark and images throughout the website. The Panel finds Respondent’s use of the
confusingly similar <wlsfrg.com> domain name for such a purpose
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
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 <wlsfrg.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 23, 2010
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