Wells Fargo & Company v. VALERIE CARRINGTON
Claim Number: FA1505001621718
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is VALERIE CARRINGTON (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wllsfago.com>, registered with Crazy Domains FZ-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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2015; the Forum received payment on June 2, 2015.
On May 31, 2015, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <wllsfago.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 June 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 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@wllsfago.com. Also on June 3, 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 June 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant owns a plethora of trademark registrations for the WELLS FARGO mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187, registered Oct. 27, 1964). The mark is used on or in connection with the provision of banking and financial services. The <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark because the domain name is a misspelling of the mark and the generic top-level domain (“gTLD”) “.com” provides no distinguishing relief for Respondent.
(ii) Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, while the domain name is not currently being used, it was formerly used to operate a phishing scam.
(iii) Respondent has engaged in bad faith registration and use. Respondent is attempting to commercially profit from a likelihood of confusion. The disputed domain name was formerly used to operate a phishing scam, and currently is not actively used. Respondent is typosquatting in bad faith. Also, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent did not submit a timely response. The Panel notes that <wllsfago.com> was registered on March 23, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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:
(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.”).
Complainant owns a plethora of trademark registrations for the WELLS FARGO mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187, registered Oct. 27, 1964). The mark is used on or in connection with the provision of banking and financial services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark. To support this assertion, Complainant notes that the domain name is a misspelling of the mark, as the domain name merely removes the letters “e” and “r” from the mark. Complainant also correctly argues that the addition of the gTLD “.com” provides no distinguishing relief for Respondent. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Prior panels have established confusing similarity where the domain name is a misspelling of the mark at issue. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s WELLS FARGO mark according to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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 asserts that Respondent is not commonly known as the <wllsfago.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the WELLS FARGO mark in domain names. The Panel notes that “VALERIE CARRINGTON” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <wllsfago.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that until April 2015, the domain name was being used to operate a phishing scam aimed at obtaining the personal information of unsuspecting Internet users. The Panel notes that the resolving webpage allows Internet users to login to their PayPal accounts. See Compl., at Attached Ex. F. While Complainant concedes that the disputed domain name is no longer used for this purpose, it is further argued that there is still no bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to an inactive website. The Panel notes that the domain name resolves to a website displaying the message “The operation time out.” See Compl., at Attached Ex. G. Prior panels have found that use of a domain name to fraudulently obtain the personal information of Internet users consists of a phishing scam. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). Additionally, prior panels have also found that use of a domain name in connection with a phishing scam cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”) . As the Panel finds that Respondent has engaged in a phishing scam, it declines to award Respondent rights or legitimate interests under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). The Panel also finds a lack of such rights due to the domain names inactive use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name . . . 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).”).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant argues that because the disputed domain name is common misspelling of the WELLS FARGO mark, Internet users who either view or have viewed the resolving webpage did so with the impression that the website was sponsored by or affiliated with Complainant. Complainant further argues that Respondent must be profiting in the process. Prior panels have found that use of a domain name to create a likelihood of confusion for commercial gain consists of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As the Panel finds that a likelihood of confusion exists, and that Respondent is commercially profiting in the process, it finds bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has displayed bad faith under Policy ¶ 4(a)(iii) by both engaging in a phishing scam and failing to actively use the disputed domain name. Complainant again notes that the domain name, at one point, resolved to a webpage that allowed Internet users to login to their PayPal accounts. See Compl., at Attached Ex. F. While Complainant concedes that the disputed domain name is no longer used for this purpose, it is further argued that Respondent has displayed bad faith because the domain name resolves to an inactive website. The Panel again notes that the domain name resolves to a website displaying the message “The operation time out.” See Compl., at Attached Ex. G. As the Panel finds that the disputed domain name was used in connection with a phishing scam, it finds bad faith under Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel also finds Policy ¶ 4(a)(iii) bad faith as it finds that Respondent is failing to actively use the disputed domain name. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i)Complainant’s WELLS FARGO trademark has a good reputation and is widely known, as evidenced by the fact that Complainant it had a long and well established reputation in connection with the provision of banking and financial services at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith. Therefore, the Panel determines that Respondent registered and is using the disputed domain name in bad faith.
Complainant also argues that Respondent is typosquatting in bad faith. Complainant argues that the removal of the “e” and “r” in the <wllsfago.com> domain name was done to take advantage of Internet users who mistakenly forgot to type in those letters when searching for Complainant’s services under the WELLS FARGO mark. Prior panels have been consistent in establishing bad faith where the respondent has engaged in typosquatting. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). As the Panel finds that Respondent has engaged in typosquatting, it finds bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant also contends that in light of the fame and notoriety of its WELLS FARGO mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel infers due to the fame of the Complainant’s mark, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <wllsfago.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 2, 2015
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