Wells Fargo & Company v. Russell Palermo / TekTango LLC
Claim Number: FA1503001607932
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Russell Palermo / TekTango LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargopay.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2015; the Forum received payment on March 5, 2015.
On March 5, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wellsfargopay.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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”).
On March 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2015 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@wellsfargopay.com. Also on March 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has exclusive trademark rights in the famous mark WELLS FARGO® trademark and various other marks incorporating the WELLS FARGO mark (together, the “Wells Fargo® Marks”). Complainant also holds numerous valid US registrations for the famous mark WELLS FARGO®
The domain name <wellsfargopay.com> is simply Complainant’s famous WELLS FARGO® trademark followed by a generic term. Respondent has merely added the generic term "pay" (plus adding the generic top-level domain “.com”) to the WELLS FARGO® trademark to create the Domain Name. Given the de minimis difference between the Domain Name and the WELLS FARGO® Mark, the Domain Name is confusingly similar to the WELLS FARGO® Mark.
The domain name is identified in the WHOIS information as September 9, 2014 for <wellsfargopay.com>.
Respondent has no rights or legitimate interests in the domain name. Respondent has never made use of the domain name in connection with a bona fide offering of goods or services. The domain name addresses a website displaying the message “website coming soon!” There is also no evidence that Respondent has, as a business or other organization, been commonly known by the Domain Name, or that the Domain Name is Respondent’s legal name.
Respondent knew of the WELLS FARGO marks at the time it registered the at-issue domain name because of the marks’ fame.
Since the domain name address a webpage displaying a “coming soon” message there is no evidence that Respondent is making an active effort to use the at-issue domain name.
At the time Respondent registered the domain name, the WELLS FARGO® marks were not only distinctive, but also internationally famous so as to give constructive, if not actual notice, to Respondent that the registration of the domain name at issue would violate Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WELLS FARGO mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address to a webpage displaying a message that a website will be “coming soon.”
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.
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.”).
The at-issue domain name is each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its WELLS FARGO mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
In forming the at-issue domain name Respondent adds the descriptive term “pay” to Complainant’s WELLS FARGO trademark less its space, and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s WELLS FARGO trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. In fact, adding the term “pay,” which suggests Complainant’s business activities, only adds to any confusion between the domain name and trademark. Therefore, the Panel finds that the <wellsfargopay.com> domain name is confusingly similar to Complainant’s WELLS FARGO trademark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain); see also, Lance Armstrong Foundation v. Chris Angeles, D2005-0888 (WIPO Oct 13, 2005) (Addition of the descriptive or non-distinctive term “talk” to complainant’s trademark used in connection with informational services did not lessen the likelihood of confusion with complainant).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Russell Palermo / TekTango LLC” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <wellsfargopay.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the domain name to display a message that a website will be “coming soon.” Using the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Parisa Tabriz, FA0702000921798 (Nat. Arb. Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint);
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent registered the <wellsfargopay.com> domain name knowing that Complainant had trademark rights in the WELLS FARGO mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s famous trademark and Respondent’s incorporation of the suggestive term “pay” into the confusingly similar domain name. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the <wellsfargopay.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsfargopay.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 19, 2015
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