Wells Fargo & Company v. Adjaele Global Internet Ltd
Claim Number: FA1010001352949
Complainant is Wells Fargo & Company (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Adjaele Global Internet Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfaego.com>, registered with FABULOUS.COM PTY LTD.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 19, 2010; the National Arbitration Forum received payment on October 20, 2010.
On October 26, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <wellsfaego.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@wellsfaego.com. Also on October 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.
A timely Response was received and determined to be complete on November 17, 2010.
On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is large financial company with $442 billion in assets and 146,000 employees. Complainant has provided financial services to the public under the WELLS FARGO mark since 1852. Complainant holds numerous valid US registrations for the famous WELLS FARGO mark. Internationally, WELLS FARGO holds valid registrations in ninety nine countries including China. WELLS FARGO has registered the domain name <wellsfargo.com> in 1994 to inform the public and its customers of the services offered by Complainant.
The domain name <wellsfaego.com> is confusingly similar to Complainant’s WELLS FARGO mark. Complainant has never authorized Respondent to use the WELLS FARGO mark. Respondent, upon information and belief, has no trademark rights in the domain name. There is no evidence that Respondent has been commonly known by the domain name.
The domain name was registered by Respondent at a time that Complainant’s mark was internationally famous and validly registered. The domain name creates a likelihood of confusion with Complainant’s mark. Respondent’s web page contains links to competitors of Complainant.
B. Respondent
Complainant has rights in the mark WELLS FARGO which is different from the domain name in dispute. The domain name is being used for a bona fide offering of goods or services. The domain has been parked and adverts automatically optimized to the interests of visitors to the domain are being shown. The parked page is providing a service to visitors to the domain by giving them the opportunity to click on advertisements for goods and services that might interest them.
Respondent disagrees with panel decisions where the inference is drawn that parking activity is a bad faith attempt to profit from a complainant’s business. These panelists do not appear to give credence to the possibility that domains have inherent value due to their generic meaning. The <wellsfaego.com> website displays different adverts depending on the time it is viewed and the location of the visitor. Some of the adverts show products or services related to those of WELLS FARGO. However an Internet user viewing the parked website could not be in any doubt that this was an unofficial website. It cannot be inferred that Respondent set out to mislead Internet users.
1. Complainant is a large financial institution with rights in the WELLS FARGO mark.
2. The disputed domain name <wellsfaego.com> is confusingly similar to Complainant’s WELLS FARGO mark.
3. Respondent has no rights to or legitimate interests in the disputed domain name.
4. The disputed domain name was registered and 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."
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’s first responsibility is to show that it has rights in the WELLS FARGO mark. Complainant has done so by proving its valid trademark registrations in the United States and worldwide. See Expedia v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4 (a)(i).”). Though Complainant has shown a valid registration in Respondent’s home country, a valid registration in any country is sufficient. See Renaisssance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <wellsfaego.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. Complainant states that the only differences between the disputed domain name and the mark are: the deletion of the space between the words in the Complainant’s mark, the misspelling of Complainant’s mark by replacing the letter “r” in Complainant’s mark with the letter “e” in the disputed domain name, and the addition of the generic top-level domain (“gTLD”) “com.” Such minor alterations are insufficient to distinguish Respondent’s <wellsfaego.com> domain name from Complainant’s WELLS FARGO mark. See 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4 (a)(i). See also Jerry Damson Inc. v. Tex Int’l Prop. Assocs, FA 916991 (Nat. Arb. Forum Apr. 10, 2007) “The mere addition of a gereric top-level domain (“gTLD”) “com” does not serve to adequately distinguish the Domain Name from the mark.”).
Respondent simply states that the domain name and mark are “different”, without supporting facts or authority. The disputed domain name may be different from Complainant’s mark, but it is confusingly similar to the mark which is the standard to be applied under the Policy.
Complainant prevails under Policy ¶ 4(a)(i).
Complainant must make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4 (a)(ii), then the burden shifts to Respondent to show it does have rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’l Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
Complainant contends that Respondent is neither known by the disputed domain name nor conducting any business under the <wellsfaego.com> domain name that would indicate that it has acquired a commonly known status in such a name. The WHOIS information for the disputed domain identifies “Adjaele Global Internet Ltd” as the registrant, which is not similar to <wellsfaego.com>. Respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18. 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name on all evidence in the record, and the respondent did not counter this argument in its response): See also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Complainant submits screen-shot evidence to show Respondent’s disputed domain name resolves to a website that features a search engine and displays various third-party links to competing banking and financial services websites, as well as a link that appears to route Internet users to Complainant’s official website. Complainant contends that respondent receives click-through and affiliate fees in connection with the third-party links. Respondent’s use of the disputed domain name to operate and maintain a website that features a search engine and various third-party links to Complainant and Complainant’s competitors in the banking and financial industry is not a use in connection with 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 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 the Policy. See also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006). There are numerous panel decisions holding that a website featuring links to other sites resulting in click through fees to respondent does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Respondent argues that Panels that have decided cases in this manner are in error. Nevertheless, the weight of panel decisions require the result reached in this decision.
Complainant prevails under Policy ¶ 4 (a)(ii).
Respondent is using the <wellsfaego.com> domain name to maintain a website with a search engine and which displays various third-party links to Complainant’s official website as well as websites of Complainant’s competitors and other unrelated links. Respondent’s use of the disputed domain name to display links to Complainant’s competitors in the financial and banking industry creates a disruption to Complainant’s business, and is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). 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) (finding 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 contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the WELLS FARGO mark. The facts and circumstances in this case permit the inference that Respondent had actual knowledge of Complainant’s mark at the time of registration and use. The Response does not deny actual knowledge merely contending that the mark and domain name are different. Respondent’s website directs Internet users to Complainant and Complainant’s competitors in the financial and banking business. The disputed domain name is merely a typosquatting version of Complainant’s famous and validly registered mark. The Panel finds it extremely unlikely that Respondent could have come up with <wellsfaego.com> as a domain name without actual knowledge of the WELLS FARGO mark. See Deep Foods, Inc. v. Jamruke, LLC. FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was aware of complainant’s YAHOO! mark at the time of registration).
Complainant prevails under 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 <wellsfaego.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson Jr., Panelist
Dated: December 6, 2010
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