Wells Fargo & Company v. Sana Arif
Claim Number: FA1411001592058
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Sana Arif (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name here at issue is <wellsfargo.nyc>, which is registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2014; the National Arbitration Forum received payment on November 26, 2014.
On November 25, 2014, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargo.nyc> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 December 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@wellsfargo.nyc. Also on December 1, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the WELLS FARGO mark in the operation and marketing of its business as a financial services company.
Complainant holds a registration for the WELLS FARGO service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 779,187, registered October 27, 1964).
Complainant operates online through the domain name <wellsfargo.com>, which has been in use since 1994.
Respondent registered the <wellsfargo.nyc> domain name on October 8, 2014.
That domain name is substantively identical to Complainant’s WELLS FARGO service mark.
Respondent has not been commonly known by that domain name.
Complainant has never licensed or otherwise authorized Respondent to use its WELLS FARGO mark.
Respondent does not provide any bona fide offering of goods or services by means of, or make a legitimate noncommercial or fair use of, the domain name.
Respondent has not made any use of the domain name other than to resolve to a parked web page.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the WELLS FARGO mark when it registered the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”).
Complainant has rights in the WELLS FARGO service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that a UDRP complainant’s registration of the DISNEY trademark with the USPTO prior to a respondent’s registration of a domain name which was confusingly similar to that mark was sufficient to prove that that complainant had rights in the mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <wellsfargo.nyc> domain name is substantively identical to Complainant’s WELLS FARGO service mark. The domain name fully incorporates Complainant’s WELLS FARGO mark, with only the removal of the space between the terms of the mark and the addition of a top-level domain (“TLD”) “.nyc,” a common abbreviation for New York City. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity or identity under the standards of the Policy. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a UDRP complainant’s GW BAKERIES mark in the <gwbakeries.mobi> domain name did not avoid a finding of identity under the Policy).
See also Audigier Brand Mgmt. Grp., LLC v. bai wentao, FA 1286108 (Nat. Arb. Forum Nov. 16, 2009) (finding that, despite the addition of a TLD to the mark of another in creating a domain name, the resulting domain name was substantively identical to that mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <wellsfargo.nyc> domain name, and that Complainant has never licensed Respondent’s use of the WELLS FARGO mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Sana Arif,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <wellsfargo.nyc> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a UDRP respondent was not commonly known by the <coppertown.com> domain name, and so had failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(i), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making an active use of the disputed domain name but only deploying it as a parked web page. In the circumstances here presented, this employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
In cases of this kind, it is customary for a panel to examine the question whether Respondent has registered and is using a disputed domain name in bad faith by reference to the provisions of Policy ¶ 4(b), which enumerates several considerations appropriate to that inquiry. However, Policy ¶ 4(b) is not an exclusive list of the factors that may properly be assessed in coming to a conclusion on the point of bad faith. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000):
[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.
In light of this, we conclude from the available evidence that Respondent knew of Complainant and its rights in the WELLS FARGO service mark when it registered the <wellsfargo.nyc> domain name. This stands as proof of Respondent’s bad faith in the registration of the domain name. See, for example,Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a UDRP respondent was "well-aware of the complainant's … mark at the time of [domain name] registration)."
It is likewise true that in circumstances like those presented here, a UDRP respondent’s failure to make any active use of a domain name for an extended period after it has become registered can constitute a form of use in bad faith. With this in mind, we are also convinced by the evidence that Respondent’s failure to make any active use of the <wellsfargo.nyc> domain name in the period since it became registered indicates bad faith in its registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a UDRP respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered and used the domain name in bad faith).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wellsfargo.nyc> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 31, 2014
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