Wells Fargo Advisors, LLC v. Kenneth Kopp
Claim Number: FA1403001548510
Complainant is Wells Fargo Advisors, LLC (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Kenneth Kopp (“Respondent”), represented by Shulman, Rogers, Gandal, Pordy & Ecker, P.A., Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <agedwards.biz>, registered with GODADDY.COM, INC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2014; the National Arbitration Forum received payment on March 14, 2014.
On March 13, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <agedwards.biz> domain name is 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2014 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@agedwards.biz. Also on March 17, 2014, 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.
A timely Response was received and determined to be complete on April 7, 2014.
Complainant submitted an Additional Submission which was received and found to be compliant on April 14, 2014.
On April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Respondent submitted an Additional Submission which was received and found to be compliant on April 21, 2014.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it is a non-bank affiliate of Wells Fargo & Company, a diversified financial services company with $422 billion in assets and 281,000 employees, providing banking, insurance, investments, mortgages, and consumer finance for more than 27 million customers through over 6,000 locations.
The Complainant states that a company called A.G. Edwards was founded in 1887. That company’s subsidiaries provided securities and commodities brokerage, investment banking, trust services, asset management, retirement planning, investment planning, and insurance products and services.
According to the Complainant, in 2008, its parent company acquired the A.G. Edwards company and its registered trademarks, namely “A.G. EDWARDS”, Those marks date back to 2004.
The Complainant alleges that the disputed domain name is confusingly similar to its registered mark. It cites UDRP precedent to support its position.
The Complainant states that it has not licensed or otherwise authorized the Respondent to use its mark. The disputed domain name is being used to direct Internet users to a website titled AG Edwards offering services competing with the services of the Complainant. The website at the Domain Name was disabled in response to a letter from the Complainant and now resolves to a parked website that contains third party advertising links to providers of various financial related products and services.
According to the Complainant, this is not a legitimate or bona fide use of the disputed domain name. Further, the Respondent is not commonly known by the disputed domain name. The Complainant cites UDRP precedent to support its position.
The Complainant alleges that the disputed domain Name is used and registered in bad faith to attract Internet users by creating a likelihood of confusion with the Complainant’s, for financial gain, in violation of Policy § 4(b)(iv). The Complainant cites UDRP precedent to support its position.
B. Respondent
The Respondent alleges that the Complainant does not have rights in the mark “A. G. EDWARDS”. He alleges that the assignment of the mark to the Complainant’s parent company is not valid for formal reasons and because it took place after the mark was abandoned.
According to the Respondent, he determined that the mark “A. G. EDWARDS” had been abandoned and so it registered the disputed domain name to conduct its legitimate business. He has applied for a trademark registration for the trademark “A. G. EDWARDS”. Thus the Complainant’s allegation of bad faith use is not justified. He cites UDRP precedent to support its position.
The Respondent requests the Panel to find Reverse Domain Name Hijacking. He cites UDRP precedent to support its position.
C. Additional Submissions
Complainant
In its Additional Submission, the Complainant reiterates that it did acquire the mark “A. G. EDWARDS” properly and it states that that mark has never been abandoned. It provides evidence to support its assertions.
The Complainant reiterates its other allegations and states that it has opposed the Respondent’s trademark applications, and will oppose other applications as soon as they are opened for challenge.
According to the Complainant, the Respondent is in the business of acquiring domain names and filing affiliated applications for many trademarks that the Respondent contends have been abandoned.
The Complainant states that it did not engage in Reverse Domain Name Hijacking. It cites UDRP precedent to support its position.
Respondent
In his additional submission, the Respondent presses his case, reiterating that the Complainant’s mark had been abandoned and had not been properly assigned. The Respondent presents evidence to support his allegations.
The Respondent admits that he registers domain names corresponding to abandoned trademarks and states that this is both legal and permitted under the Policy.
The Respondent alleges that he has rights and a legitimate interest in the disputed domain name because he is a licensed real estate agent.
The Respondent reiterates that the instant dispute is out of the scope of the Policy.
The Complainant owns registered trademark rights, dating back to 2004, to the mark “A. G. EDWARDS”.
The Complainant has not licensed or otherwise authorized the Respondent to use its mark.
The Respondent registered the disputed domain name in 2013 and is using it to resolve to a web site offering services that compete with those of the 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."
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.
As a preliminary matter, the Panel must rule on the Respondent’s allegation that the present disputed is outside the scope of the UDRP, because it involves conflicting claims regarding a trademark.
On the basis of the evidence presented to it, the Panel holds that the Complainant does have rights in the trademark “A. G. EDWARDS”, so the dispute does not concern trademark rights. Even if the dispute did concern such rights, the Panel could consider the Complaint and issue a decision. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Telebrands Corp. v. Khalid, FA 467079 (Nat. Arb. Forum May 31, 2005) (decided to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute).
In its additional submission, the Complainant submits a copy of the assignment of the A.G. EDWARDS mark as recorded with the USPTO on July 18, 2008. Further, the Complainant asserts its rights in the “A.G. EDWARDS” mark based on its registrations in various countries going back to 2004.
The Respondent alleges that the Complainant does not have valid trademark rights because it did not use the mark. But, under the Policy, it suffices that the Complainant has a registered trademark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of 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).
The disputed domain name is confusingly similar, in the sense of the Policy, to the disputed domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); 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)).
The Complainant presents evidence showing that the disputed domain name is being used to point to a web site offering services that compete with those of the Complainant.
Past panels have found that using an identical domain name to offer services that compete with a Complainant does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, the Panel finds that the Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because Respondent is using the disputed domain name to offer services that compete with Complainant.
The Respondent alleges that his registration of the disputed domain name is legitimate because he had determined that the Complainant’s mark had been abandoned. On the basis of the evidence presented to it, the Panel finds that the Complainant’s marks were active and that the Respondent should have known this. Thus it finds that the Respondent’s explanations are not convincing. Further, the Respondent alleges that he has a legitimate interest interest in the mark because he is a licensed real estate agent. But his name is not related to the mark, so the Panel is not convinced by this argument.
Consequently, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
As noted above, the Respondent is using the disputed domain name to offer services that compete with those of the Complainant. This has been found to constitute bad faith under Policy ¶ 4(a)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also 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).
Consequently, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Since the Complainant has prevailed, the allegation of reverse domain name hijacking is dismissed. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <agedwards.biz> domain name be TRANSFERRED from Respondent to Complainant.
The claim for a finding of Reverse Domain Name Hijacking is dismissed.
Richard Hill, Panelist
Dated: April 21, 2014
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