Wells Fargo & Company v. Isaac Goldstein snapnames@isaacgoldstein.com a/k/a Isaac Goldstein, pool@isaacgoldstein.com
Claim Number: FA1011001360860
Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Isaac Goldstein snapnames@isaacgoldstein.com a/k/a Isaac Goldstein, pool@isaacgoldstein.com (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wellsfargocareers.com> and <wellsfagrodealerservices.com>, registered with CADiware AG and Moniker Online Services, LLC.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2010; the National Arbitration Forum received payment on December 1, 2010.
On December 1, 2010, CADiware AG confirmed by e-mail to the National Arbitration Forum that the <wellsfargocareers.com> domain name is registered with CADiware AG and that Respondent is the current registrant of the name. On December 3, 2010, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <wellsfagrodealerservices.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. CADiware AG and Moniker Online Services, LLC have verified that Respondent is bound by the CADiware AG and Moniker Online Services, LLC registration agreements 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 December 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@wellsfargocareers.com and postmaster@wellsfagrodealerservices.com. Also on December 10, 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 January 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names.
3. Respondent registered and used the <wellsfargocareers.com> and <wellsfagrodealerservices.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 providing banking, insurance, investments, mortgages and consumer finance for more than 27 million customers through over 6,000 locations. Complainant owns numerous trademark registrations for the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”):
USPTO
Reg. No. 779,187 issued October 27, 1964;
Reg. No. 1,131,103 issued February 19, 1980;
Reg. No. 1,136,497 issued May 27, 1980;
Reg. No. 1,138,966 issued August 26, 1980;
Reg. No. 1,167,626 issued September 1, 1981;
Reg. No. 1,181,279 issued December 8, 1981;
Reg. No. 1,274,680 issued April 17, 1984;
Reg. No. 2,555,996 issued April 2, 2002;
Reg. No. 2,555,997 issued April 2, 2002;
Reg. No. 2,561,807 issued April 16, 2002;
Reg. No. 2,597,836 issued July 23, 2002;
Reg. No. 2,617,850 issued September 10, 2002;
Reg. No. 2,688,407 issued February 18, 2003;
Reg. No. 2,694,042 issued March 4, 2003;
Reg. No. 2,800,535 issued December 30, 2003;
Reg. No. 2,808,874 issued January 27, 2004;
Reg. No. 2,810,815 issued February 3, 2004;
Reg. No. 2,810,816 issued February 3, 2004; &
Reg. No. 3,626,451 issued May 26, 2009.
Respondent, Isaac Goldstein snapnames@isaacgoldstein.com a/k/a Isaac Goldstein, pool@isaacgoldstein.com, registered the <wellsfargocareers.com> domain name on May 7, 2010 and the <wellsfagrodealerservices.com> domain name on July 24, 2010. The disputed domain names resolve to generic landing pages featuring third-party advertising links to providers of various bank related products and services.
Respondent has previously been the respondent in multiple other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See, e.g., Wells Fargo & Co. v. Goldstein, FA 1321448 (Nat. Arb. Forum June 9, 2010); Zevex, Inc. v. Goldstein, FA 1323005 (Nat. Arb. Forum June 15, 2010); Gedex Inc. v. Goldstein, FA 1332191 (Nat. Arb. Forum Aug. 11, 2010).
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 numerous trademark registrations for the WELLS FARGO mark with the USPTO:
USPTO
Reg. No. 779,187 issued October 27, 1964;
Reg. No. 1,131,103 issued February 19, 1980;
Reg. No. 1,136,497 issued May 27, 1980;
Reg. No. 1,138,966 issued August 26, 1980;
Reg. No. 1,167,626 issued September 1, 1981;
Reg. No. 1,181,279 issued December 8, 1981;
Reg. No. 1,274,680 issued April 17, 1984;
Reg. No. 2,555,996 issued April 2, 2002;
Reg. No. 2,555,997 issued April 2, 2002;
Reg. No. 2,561,807 issued April 16, 2002;
Reg. No. 2,597,836 issued July 23, 2002;
Reg. No. 2,617,850 issued September 10, 2002;
Reg. No. 2,688,407 issued February 18, 2003;
Reg. No. 2,694,042 issued March 4, 2003;
Reg. No. 2,800,535 issued December 30, 2003;
Reg. No. 2,808,874 issued January 27, 2004;
Reg. No. 2,810,815 issued February 3, 2004;
Reg. No. 2,810,816 issued February 3, 2004; &
Reg. No. 3,626,451 issued May 26, 2009.
The Panel finds that these USPTO trademark registrations provide conclusive evidence of Complainant’s rights in the WELLS FARGO mark for the purposes of Policy ¶ 4(a)(i), even though these trademark registrations are not in the country of Respondent’s residence or business operations. See Expedia, Inc. 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).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that Respondent’s <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark. The <wellsfargocareers.com> domain name differs only in the removal of the space between the terms and the addition of the generic word “careers” and the generic top-level domain (“gTLD”) “.com.” The <wellsfagrodealerservices.com> domain names varies Complainant’s mark by deleting the space between the terms, transposing the letters “r” and “g” in “fargo,” and adding the generic terms “dealer” and “services” and the gTLD “.com.” The Panel finds that adding generic terms to Complainant’s mark does not distinguish the disputed domain names for the purposes of Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel also finds that misspelling Complainant’s mark by transposing two letters does not prevent a finding of confusing similarity. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Finally, the Panel finds that removing the space between terms and adding the gTLD “.com” is of no consequence to the confusing similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the Panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel concludes that Respondent’s <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent now has the burden of demonstrating rights and legitimate interests in the disputed domain names. Respondent, however, failed to respond to the Complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel accordingly finds that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to analyze the evidence in the record according to the Policy ¶ 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain names.
Complainant alleges that Respondent has never been a licensee of Complainant. The WHOIS information for the disputed domain names lists the registrant as “Isaac Goldstein snapnames@isaacgoldstein.com a/k/a Isaac Goldstein, pool@isaacgoldstein.com,” which has no apparent relationship to the disputed domain names. The Panel finds that Respondent is therefore not commonly known by the disputed domain names and does not have rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant further contends that there is no evidence supporting Respondent’s rights and legitimate interests in the <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names because Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names according to Policy ¶¶ 4(c)(i) and 4(c)(iii). Respondent’s disputed domain names redirect to directory websites with no function other than displaying links to the web pages of other providers of various bank related products and services. The directory websites presumably profit Respondent through “pay-per-click” fees. The Panel finds that such directory websites do not comply with the requirements of Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), indicating Respondent’s lack of rights and legitimate interests in the disputed domain names. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been the respondent in multiple other UDRP proceedings in which the disputed domain names were transferred to the respective complainants. See, e.g., Wells Fargo & Co. v. Goldstein, FA 1321448 (Nat. Arb. Forum June 9, 2010); Zevex, Inc. v. Goldstein, FA 1323005 (Nat. Arb. Forum June 15, 2010); Gedex Inc. v. Goldstein, FA 1332191 (Nat. Arb. Forum Aug. 11, 2010). The Panel finds that such a history of adverse UDRP decisions is evidence that Respondent has a pattern of registering domain names which misappropriate third-party trademarks. The Panel concludes that this pattern demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).
Complainant alleges that Respondent uses the <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names to redirect Internet users to directory websites featuring pay-per-click links to third-party provides of financial and banking related services and products in competition with Complainant. These directory pages substantially disrupt Complainant’s business because unsuspecting Internet users are directed away from Complainant’s actual site and may subsequently follow one of the displayed links to arrive at a competitor’s site. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according to 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 that Respondent’s operation of directory websites reached via the <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names presumably financially benefits Respondent. By displaying links that are related to Complainant’s business in the financial services industry, there is a greater likelihood that the links will be of interest to Internet users arriving at the site and that the Internet users will subsequently click on one of them. Each click results in profit to Respondent by way of “click-through” fees. The Panel finds that Respondent’s efforts to increase traffic to its site and consequently profit by attracting Complainant’s customers are evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <wellsfargocareers.com> and <wellsfagrodealerservices.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 10, 2011
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