Wells Fargo & Company v. JIANMIN GUO / MEIZHONG NENGTE PHARM.&CHEM. CO. LTD
Claim Number: FA1704001725501
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Barnes & Thornburg LLP, Minnesota, USA. Respondent is JIANMIN GUO / MEIZHONG NENGTE PHARM.&CHEM. CO. LTD (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wellsargo.com> and <wllsfargo.com>, registered with eNom, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2017; the Forum received payment on April 7, 2017.
On April 6, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <wellsargo.com> and <wllsfargo.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 April 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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@wellsargo.com, and postmaster@wllsfargo.com. Also on April 10, 2017, 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 May 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in WELLS FARGO and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides banking and financial services by reference to the trademark WELLS FARGO;
2. The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 779,187, registered October 27, 1964;
3. the disputed domain names were both created on May 5, 2000 and resolve to sites which contain various click-through hyperlinks to mortgage providers or miscellaneous service providers; and
4. there is no commercial relationship between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for WELLS FARGO, the Panel is satisfied that it has trademark rights in that term.[i]
It is agreed that for the purposes of comparison, the gTLD can generally be ignored, as it can in this case.[ii] The disputed domain names involve trivial misspellings of the trademark. In one case the letter “e” is omitted from the name, “Wells”, and in the other the letter “f” is omitted from the name, “Fargo”.
Neither deletion substantially affects the identity of the trademark. The compared terms remain visually very similar and the trademark remains the recognizable element of the domain names.[iii]
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark and so Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies “JIANMIN GUO / MEIZHONG NENGTE PHARM.& CHEM. CO. LTD.” as the registrant/registrant organisation and so there is no evidence that Respondent might be commonly known by either of the disputed domain names.
There is no evidence that Respondent might hold relevant trademark rights and Complainant has stated that there has been no relationship between the parties, nor any authorization given to use the trademark or register a domain name incorporating the trademark.
There is no indication that Respondent is making either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. On the contrary, the evidence accompanying the Complaint shows that the domain names redirect Internet users to websites which contain various click-through hyperlinks to mortgage providers or miscellaneous service providers. Such use is neither is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names.[v]
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response there is nothing on which a claim to rights or interests in the domain names can rest and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities that the disputed domain names were registered in bad faith and that they are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
In this case Panel finds bad faith under paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. The necessary likelihood of confusion as to source or affiliation exists. The Panel accepts Complainant’s contention that Respondent is benefitting commercially by way of referral fees or in some other way. In terms of paragraph 4(b)(iv) the Panel finds that Respondent is using the domain names to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s trademark.[vi]
The Panel finds the third limb of the Policy established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wellsargo.com> and <wllsfargo.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 12, 2017
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[ii] See PepsiCo, Inc. v. Shah, FA 103934 (Forum Mar. 4, 2002); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000))
[iii] See, for example, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (FORUM Aug. 3, 2015) finding <twitcch.tv> confusingly similar to the TWITCH TV trademark; Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) finding <wllsfago.com> confusingly similar to the WELLS FARGO mark; Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) finding that the elimination of spaces between terms do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
[iv] See Do The Hustle, LLC v. Tropic Web, D2000- 0624 (WIPO Aug. 21, 2000).
[v] See, for example, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA 1583409 (Forum Nov. 24, 2014) finding respondent’s use of <capitalonebnk.com> was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use” because “using a confusingly similar domain name to display links in competition with the complainant’s services is not a use which falls within Policy ¶¶ 4(c)(i) 4(c)(iii).”.
[vi] See, for example, Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014), where the panel found that the respondent registered and used <dtaples.com> in bad faith under Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to host third-party links to the complainant’s competitors from which the respondent was presumed to obtain some commercial benefit.
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