Wells Fargo & Company v. k wall a/k/a PrivacyProtect.org / Domain Admin
Claim Number: FA1108001404146
Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is k wall a/k/a PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wellafargoadvisors.com> registered with Moniker Online Services, LLC, and <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com>, registered with Power Brand Center 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 22, 2011; the Forum received payment on August 23, 2011.
On August 26, 2011, Moniker Online Services, LLC, confirmed by e-mail to the Forum that the <wellafargoadvisors.com> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC 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”).
After numerous requests, the Registrar, POWER BRAND CENTER CORP., had not confirmed to the Forum that the <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names are registered with POWER BRAND CENTER CORP. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. Under these circumstances, the Forum’s standing instructions are to proceed with the resolution of the dispute.
However, on September 27, 2011, after repeated attempts to contact POWER BRAND CENTER CORP. by ICANN, POWER BRAND CENTER CORP. responded by explaining that the failure to respond previously was based on personnel issues that had arisen and confirming by e-mail to the Forum that the <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names are registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER CORP. 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 September 20, 2011, setting a deadline of October 11, 2011, by which Respondent could file a Response to the Complaint, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wellafargoadvisors.com, postmaster@wellfargoadvisors.com, postmaster@wellsfargoadviser.com, postmaster@welsfargoadvisors.com. Also on September 20, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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. POWER BRAND CENTER CORP. provided new contact information for Respondent and immediately after receiving this new information on September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to the new e-mail address contained in the new contact information. The Complaint was not sent to any physical addresses or fax numbers.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent’s Default.
On October 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names.
3. Respondent registered and used the <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, operates in the banking, insurance, investment, mortgage, and consumer finance industries, and has been in business since 1852. Complainant claims rights in the WELLS FARGO mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187 registered October 27, 1964).
Respondent, k wall a/k/a PrivacyProtect.org / Domain Admin, registered the <wellafargoadvisors.com> domain name on April 6, 2010, the <wellfargoadvisors.com> domain name on August 13, 2009, the <wellsfargoadviser.com> domain name on August 13, 2009, and the <welsfargoadvisors.com> domain name on February 23, 2009. All of the disputed domain names resolve to websites containing various third-party links to both competing financial services websites and 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 has provided the Panel with evidence that it has registered the WELLS FARGO mark (e.g., Reg. No. 779,187 registered October 27, 1964) with the USPTO. The Panel finds that Complainant has presented sufficient evidence to establish Policy ¶ 4(a)(i) rights in its WELLS FARGO mark. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark. The <wellafargoadvisors.com> domain name removes the space between the terms of the mark, replaces the letter “s” with the letter “a,” and adds the descriptive term “advisors” to the mark. The <wellfargoadvisors.com> domain name removes the space between the terms of the mark, removes the letter “s” entirely, and adds the descriptive term “advisors.” The <wellsfargoadviser.com> domain name simply removes the space between the terms of the mark and adds the misspelled descriptive term “adviser.” Lastly, the <welsfargoadvisors.com> domain name removes the space between the terms of the mark, deletes the letter “l,” and adds the descriptive term “advisors.” All of the domain names add the generic top-level domain (“gTLD”) “.com.” The Panel finds that the changes presented above do not distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); American 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)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to demonstrate that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. See 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence in the record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant further contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names does not indicate that Respondent is commonly known by any of the domain names, and there is no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that the disputed domain names all resolve to similar websites. In the screen-shot evidence in the record, it is clear that Respondent’s domain names all resolve to web directory websites featuring third-party links to competing businesses, as well as unrelated businesses. Such links are found under headings, such as “Online Banking,” “Mutual Funds,” “Home Finance,” “Best Loan Deals,” “Airline Tickets,” “Free Credit Report,” and many others. The websites also feature a commercial engine. Presumably, Respondent, or someone connected with Respondent, collects referral or affiliate fees from such links and businesses each time an Internet user clicks on one of the links. Therefore, the Panel finds that Respondent is not making 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 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); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has shown that the disputed domain names resolve to websites containing numerous third-party links to competing financial services websites. The Panel finds that such use of confusingly similar domain names disrupts Complainant’s business by diverting Internet users to competing services. Therefore, the Panel finds that Respondent registered and is using the domain names in bad faith pursuant 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)).
Further, the Panel presumes that Respondent registered the disputed domain names in order to profit from those Internet users who happen upon its websites and click through to the companies advertised on Respondent’s website. Because Respondent’s presumed motivation in registering and using the disputed domain names was for commercial gain, the Panel finds that Respondent’s registration and use amounted to bad faith within the meaning of Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also University 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 that 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 <wellafargoadvisors.com>, <wellfargoadvisors.com>, <wellsfargoadviser.com>, and <welsfargoadvisors.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 19, 2011
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