Wells Fargo & Company v. Ryan G Foo / PPA Media Services
Claim Number: FA1605001673631
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eellsfargo.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2016; the Forum received payment on May 9, 2016.
On May 10, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <eellsfargo.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS 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 May 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2016 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@eellsfargo.com. Also on May 10, 2016, 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 3, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Pursuant to ICANN Rule 3(b)(viii), this Complaint is based on Complainant’s exclusive trademark rights in the famous mark WELLS FARGO® and various other marks incorporating the WELLS FARGO trademark (together, the “Wells Fargo® Marks”). Wells Fargo is 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 27million customers through over 6,000 locations. Wells Fargo is the issuer of approximately six million credit card accounts, and was the number one originator of home mortgages in the United States in 2003. Wells Fargo has provided financial services and related goods and services to the public under the WELLS FARGO® mark and a family of related since 1852.
Wells Fargo also holds numerous valid US registrations for the famous mark WELLS FARGO® including Registration Nos. 779,187; 1,131,103; 1,136,497; 1,138,966; 1,167,626; 1,274,680; 2,327,045; 2,457,743; 2,526,696; 2,555,996; 2,555,997; 2,561,807; 2,597,836; 2,617,850; 2,680,835; 2,680,854; 2,683,387; 2,688,407; 2,690,610; 2,690,612; 2,694,042; 2,697,633; 2,800,535; 2,802,581; 2,808,874; 2,810,815; 2,810,816; 2,810,817; 2,810,818; 2,810,819; 3,626,451; 3,810,870; 4,742,479; and 4,746,814.
Internationally, Wells Fargo holds valid registrations for the mark WELLS FARGO® in the following countries: Albania, Algeria, Antigua and Barbuda, Argentina, Armenia, Aruba, Australia, Azerbaijan, Bahamas, Bahrain, Belarus, Bermuda, Bhutan, Bolivia, Bosnia- Herzegovina, Botswana, Brazil, British Virgin Islands, Burundi, Canada, Caribbean Netherlands, Cayman Islands, Chile, China, Colombia, Costa Rica, Croatia, Cuba, Curacao, Czech Republic, Dominican Republic, Ecuador, Egypt, El Salvador, Estonia, European Community, Fiji, France, Georgia, Germany, Ghana, Guatemala, Haiti, Honduras, Hong Kong, Hungary, Iceland, India, Indonesia, International Register, Iran, Ireland, Israel, Italy, Jamaica, Japan, Kenya, North Korea, South Korea, Kosovo, Kyrgyz Republic, Latvia, Lebanon, Lesotho, Liberia, Liechtenstein, Lithuania, Macedonia, Madagascar, Malawi, Malaysia, Mauritius, Mexico, Moldova, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, New Zealand, Nicaragua, Norway, OAPI, Oman, Pakistan, Panama, Papua New Guinea, Paraguay, Peru, Philippines, Portugal, Russian Federation, Rwanda, San Marino, Sao Tome e Principe, Saudi Arabia, Serbia, Seychelles, Sierra Leone, Singapore, Slovak Republic, Slovenia, South Africa, St. Maarten, Sudan, Swaziland, Switzerland, Syria, Taiwan, Tajikistan, Tanganyika, Tangier, Thailand, Trinidad & Tobago, Tunisia, Turkey, Turkmenistan, Uganda, Ukraine, United Arab Emirates, United Kingdom, Uruguay, Uzbekistan, Venezuela, Vietnam, Zambia, Zanzibar and Zimbabwe.
Additionally, Wells Fargo has rights to many other trademarks incorporating the WELLS FARGO® mark. Together, these marks make a strong family of Wells Fargo® Marks.
Wells Fargo has also registered the domain name wellsfargo.com. Since 1994, Wells Fargo has been operating an Internet web site identified by the wellsfargo.com domain name. The website informs the public and Wells Fargo’s present and potential customers of the broad array of services it offers. Wells Fargo provides many of these services to customers directly over its website. To connect with Wells Fargo’s website at wellsfargo.com, an Internet user types “wellsfargo.com” or “www.wellsfargo.com.”
The highly distinctive Wells Fargo® Marks are of great and incalculable value to Wells Fargo. Wells Fargo closely controls the use and reproduction of the Wells Fargo® Marks to ensure that all of its current and potential customers can rely upon these marks as signifying banking and financial services of the highest quality.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Domain Name is confusingly similar to the WELLS FARGO® Marks. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
(i.) The Domain Name is confusingly similar to the famous WELLS FARGO® Marks and Wells Fargo’s domain name wellsfargo.com.
(ii.) As a result of Wells Fargo’s continuous and extensive use and promotion and as demonstrated by the numerous trademark registrations throughout the world, the WELLS FARGO® Marks are famous worldwide as identifying Wells Fargo as the source of quality banking and financial services and, in light of this history, the WELLS FARGO® Marks qualify as famous marks under the Lanham Act. See 15 U.S.C. § 1125(e); This conclusion of fame has been reached by Prior UDRP panels. See Wells Fargo & Company v. Jackson, FA0405000271697 (Nat. Arb. Forum, Jun. 29, 2004) (WELLS FARGO® is a famous mark); Wells Fargo & Company v. Kahn, FA0211000135009 (Nat. Arb. Forum Jan. 13, 2003) (same); Wells Fargo & Company v. Stoneybrook, FA0009000095690 (Nat. Arb. Forum Oct. 27, 2000) (same).
(iii.) The Domain Name is a misspelling of the WELLS FARGO® Mark – eellsfargo.com – involves merely replacing the letter “w” with the letter “e” in the domain name (plus adding the generic top-level domain “.com”). 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. See Artisan Confections Company v. [Registrant], FA 142210 (Nat. Arb. Forum Apr, 30, 2008) (“[T]he misspelling by one letter of a complainant’s mark fails to create a distinguishing characteristic needed in order to prevent a disputed domain name from being confusingly similar to a mark pursuant to Policy ¶4(a)(i).”); see also State Farm Mut, Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).
[b.] Respondent has no rights or legitimate interest in the Domain Name. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
(i.) Upon information and belief, Respondent has no trademark or intellectual property rights in the Domain Name. Respondent is not and has never been a licensee of Wells Fargo.
(ii.) Respondent has never made any use of, or demonstrable preparation to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. See 15 U.S.C. § 1125(d)(1)(b)(III); ICANN Policy § 4(c)(i). Given the severity of Respondent’s deception, on or around March 29, 2016, the Domain Name was reported for phishing activity. The Domain Name was automatically redirecting Internet users to third party websites which may have contained malware, and other sites including but not limited to sites conducting unauthorized surveys, and websites which are search engines or generic landing pages featuring third party advertising links to providers of various bank related products. The website host recently disabled access to the offending website and the domain name no longer resolves to an active website; however, upon information and belief, Respondent will again enable the offending website through a different website host. Such use is not a bona fide offering of goods or services under usTLD Policy ¶4(b)(iv) or a legitimate noncommercial or fair use under usTLD Policy ¶4(c)(iv).
(iii.) There is 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. Therefore, the burden must shift to Respondent to show that it has been known by the Domain Name. See Gallup, Inc. v. Amish Country Store, FA0012000096209 (Nat. Arb. Forum Jan. 23, 2001).
[c.] Respondent registered and is using the Domain Name in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
(i.) The creation dates of the Domain Name is identified in the WHOIS information as October 8, 2004. 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. See Samsonite Corp. v. Colony Holding, FA0003000094313 (Nat. Arb. Forum April 17, 2000) (Evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration).
(ii.) It is clear from the record that Respondent has registered a Domain Name which is nearly identical to the WELLS FARGO® mark and the WELLS FARGO® Marks, but for common misspellings, and other errors. As a result, the registered Domain Name, standing by itself, is evidence of Respondent's bad faith. This constitutes typosquatting. Typosquatting on a famous trademark is per se evidence of bad faith.
“Typosquatting, however, is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith... [W]here the mark is clearly not generic, then the intentional registration and use of the misspelled word or words... clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy.”
Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, No. D2002-1011 (WIPO Jan. 21, 2003) quoted in Target Brands, Inc. v. Ling Shun Shing, FA 190509 (Nat. Arb. Forum Oct. 7, 2003); See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (Bad faith registration and use found where it is “inconceivable that the Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); AltaVista Co. v. GrandTotal Finances Ltd., No, D2000-0848 (WIPO Oct. 17, 2000) (“[T]he Domain Names are so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith,”); Telestra Corp. v. Nuclear Marshmallows, No. D2000-0003 (WIPO Feb. 8, 2000) (Given the wide reputation of the mark, “it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name”).
The Domain Name here can be interpreted as nothing other than a derivation of the WELLS FARGO® Mark and demonstrate as such bad faith per se. See Wells Fargo & Co. v. Doe, No. 362108 (Nat. Arb. Forum Dec. 30, 2004) (holding wellzfargo.com to be typosquatting on Complainant’s mark); Wells Fargo & Co. v. Dinoia, No. 366278 (Nat. Arb. Forum Dec. 30, 2004) (same regarding ellsfargo.com). At the time the Respondent registered the Domain Name, the WELLS FARGO® Marks were sufficiently distinctive and famous to give constructive notice to Respondent that the registration of the Domain Name at issue would violate Complainant’s rights. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (Evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration). Nevertheless, the Respondent proceeded with registration of the Domain Name.
(iii.) The Domain Name was used and registered in bad faith to attract Internet users by creating a likelihood of confusion with the Complainant’s WELLS FARGO® Mark, for financial gain. ICANN Policy § 4(b)(iv). The websites once associated with the Domain Name irrefutably demonstrate that the eellsfargo.com domain name has been used and was registered by Respondent in an effort to deceive Internet users. Respondent's use of the Domain Name demonstrates bad faith use and registration through the automatic redirection of Internet users to third party sites conducting unauthorized surveys, websites which are search engines or generic landing pages featuring third party advertising links to providers of various bank related products and other sites that prompt users to install software which may contain malware.
Immediately upon entering the eellsfargo.com domain name into an Internet browser, the domain name begins an automatic redirection to one of several websites of third parties. Several such sites have the heading “Update Java - IMPORTANT”. The webpages then warn that the users Java version may be out of date and recommend updating the users Java plug in. The webpage the user was redirected to is at the domain name fugupdates144.com, a domain known to be used to distribute malicious adware and pop up viruses to unsuspecting Internet users. This type of activity constitutes bad faith. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (Use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name); see also Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (Hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶4(a)(ii)).
On other attempts to enter the Domain Name in a web browser, the user was redirected to websites containing landing pages with search engines and advertising links under the heading "Related Searches" or “Sponsored Links”. These advertising links resolve to the web pages for providers of banking and financial services of companies that are direct competitors of Complainant. The only reasonable inference is that Respondent chose the Domain Name to trade on the good will of Wells Fargo’s famous WELLS FARGO® Mark, to gain traffic by attracting Internet users who might click on a link in an email message or otherwise locate the Domain Name and then conclude that the Domain Name might be a legitimate address for a legitimate website on which Wells Fargo offers various banking and financial services, and then offering such users financial services which directly compete with those offered by Complainant. This attempt to play off of Complainant’s famous WELLS FARGO® Mark constitutes a bad faith attempt to create consumer confusion for financial gain. See Wells Fargo & Company v. Jim Matzen, FA0807001216163 (Nat. Arb. Forum Aug. 29, 2008) (Bad faith registration and use of the domain name <bankownedwellsfargo.com> when used to direct Internet users to a site offering financial services competing with those of the Complainant). See also Lilly ICOS LLC v. Emilia Garcia, D-2005-0031 (WIPO March 29, 2005) (Redirection to website of competitor offering generic version of complainant’s drug evidence of bad faith); Société des Hôtels Méridien v. Modern Ltd. - Cayman Web Dev., D-2004-0321 (WIPO June 14, 2004) (“The question of whether use of a domain name is done in bad faith has been considered especially clear if the site contains links to websites belonging to competitors of the Complainant.”); and Champagne Lanson v. Development Services/MailPlanet.com, Inc., D2006-0006 (WIPO March 20, 2006) (Landing pages are not legitimate where ads are keyed to the trademark value of the domain name and it was in Respondent’s control to decide whether to allow the domain name to resolve to a parked website containing advertisements).
(iv.) The domain name does not resolve to an active website. As there is no evidence of present use, or demonstrable preparations to use, the website under the disputed domain name, its present, passive use amounts to bad faith. See Target Brands, Inc. v. Ray Quiban d/b/a Cashflow Direct; FA0610000823122 (NAF December 27, 2006); Tetris Holding, LLC v. Tetris User Group; FA0610000823282 (NAF December 13, 2006); Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). From the circumstances, the only logical conclusion is that Respondent’s likely future use of the Domain Name will not differ from its past bad faith use.
(v.) In light of these circumstances, Respondent has registered and used the Domain Name in bad faith under ICANN Policy § 4(b).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 uses the WELLS FARGO mark in connection with its financial services business. Complainant registered the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 779,187, registered October 27, 1964). Registration of a mark with a governmental authority (such as the USPTO) sufficiently demonstrates a complainant’s rights in a mark. This is true regardless of the location of the governmental authority. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶4(a)(i), even though Respondent reportedly resides in the Isle of Man). In this case, Complainant has also registered its mark in Respondent’s country of origin, Chile. Complainant has adequately demonstrated rights in the WELLS FARGO mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <eellsfargo.com> domain name is confusingly similar to the WELLS FARGO mark because it incorporates Complainant’s entire mark other than the letter “w,” which is replaced by an “e,” elimination of the space and the addition of the gTLD “.com.” Such minor alterations to marks not sufficient to overcome a finding of confusing similarity under Policy ¶4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)). Domain name syntax prohibits spaces in a domain name, which means their absence is ignored under a Policy ¶4(a)(i) analysis. Similarly, domain name syntax requires a TLD, whether it be a gTLD or a ccTLD. Therefore, a TLD must be ignored under a Policy ¶4(a)(i) analysis. Respondent’s <eellsfargo.com> domain name is confusingly similar to the WELLS FARGO mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in the <eellsfargo.com> domain name. First, Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name currently lists “”Ryan G. Foo” as registrant (the domain name was originally registered using a privacy service, but the beneficial owner was revealed once this Proceeding commenced). Complainant has not given Respondent permission to use its WELLS FARGO mark. Respondent failed to submit a response to this Proceeding. In light of the record, there is no factual basis to find Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent is neither making (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use of the <eellsfargo.com> domain name. The domain name currently redirects users to third-party websites that conduct surveys or host competing hyperlinks. Some of these third-party sites attempt to download malware by asking visitors to update their version of Java, inter alia. Redirecting users to a website that attempts to download malware, along with hosting competing hyperlinks, does not constitute (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (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); see also Expedia, Inc. v. Compaid, FA 520654 (Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
Finally, registering a domain name using a WHOIS privacy service does not give Respondent any rights to the mark because Respondent has not publicly associated itself with the mark.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent attracts Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent registered the <eellsfargo.com> domain name to create a likelihood of confusion with Complainant and Complainant’s mark to profit from users looking for Complainant’s site. Internet user confusion resulting from being redirected to a web site offering links to competing banking services constitutes bad faith registration and use under Policy ¶4(b)(iv). See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Complainant claims it is inconceivable Respondent could have registered the <eellsfargo.com> domain name without actual knowledge of Complainant's rights in its mark because it is so famous. It appears to this Panel Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
Finally, Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, this Panel feels comfortable in finding bad faith registration and use on that basis alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <eellsfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, June 7, 2016
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