Wachovia Corporation v. Namia Limited
Claim
Number: FA0501000397660
Complainant is Wachovia Corporation (“Complainant”)
represented by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street, Hearst Tower, 47th Floor, Charlotte, NC
28202. Respondent is Namia Limited (“Respondent”), Post Office Box 533WB, West
Bay, Grand Cayman WB, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wakovia.com>, registered with 123 Easy
Domain Names d/b/a Signature Domains.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 7, 2005.
On
January 7, 2005, 123 Easy Domain Names d/b/a Signature Domains confirmed by
e-mail to the National Arbitration Forum that the domain name <wakovia.com>
is registered with 123 Easy Domain Names d/b/a Signature Domains and that
Respondent is the current registrant of the name. 123 Easy Domain Names d/b/a
Signature Domains has verified that Respondent is bound by the 123 Easy Domain
Names d/b/a Signature Domains registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@wakovia.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
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." 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 makes the following assertions:
1. Respondent’s <wakovia.com>
domain name is confusingly similar to Complainant’s WACHOVIA mark.
2. Respondent does not have any rights or
legitimate interests in the <wakovia.com> domain name.
3. Respondent registered and used the <wakovia.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wachovia Corporation, is a holding company that owns numerous subsidiary
companies engaged, individually and collectively, in providing a wide variety
of banking and financial services throughout the world.
Complainant
holds numerous registrations for the WACHOVIA mark with the United States
Patent and Trademark Office (Reg. No. 883,529 issued December 30, 1969, Reg.
No. 1,735,242 issued November 24, 1992, Reg. No. 1,729,833 issued November 3,
1992, Reg. No. 2,738,730 issued July 15, 2003, Reg. No. 2,805,546 issued
January 13, 2004 and Reg. No. 2,744,626 issued July 29, 2003) in connection
with banking and related financial services.
In addition, Complainant owns at least twenty-five other federal
trademark registrations for its WACHOVIA family of marks. Complainant’s WACHOVIA mark is also
registered in Japan, Germany, Switzerland, Canada, the United Kingdom and the
Cayman Islands.
Complainant and
its predecessor companies have been using the WACHOVIA mark since Wachovia
National Bank was created in 1879.
Since that time, Complainant et al. have expanded its use of the
mark to include a wide variety of financial services. After its 2001 merger with First Union, Complainant is the fourth
largest financial institution in the United States. Additionally, Complainant’s extensive global network includes
thirty-three representative offices and over 3,000 correspondent banking
relationships in more than 130 countries.
Complainant’s
main websites are operated at <wachovia.com> and
<wachoviabank.com>.
Respondent
registered the <wakovia.com> domain name on March 26, 2002. Respondent is using the domain name to
direct Internet users to a website that advertises banking and financial
services of Complainant’s competitors and hosts a search engine to link viewers
to a variety of websites, predominantly including sites that involve financial
services that directly compete with Complainant’s services. In addition, the disputed domain name
generates pop up advertisements.
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."
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.
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.
Complainant has
established that it has rights in the WACHOVIA mark through registrations with
the United States Patent and Trademark Office and through continued use of its
mark in commerce for the last 125 years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding
that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate
‘exclusive rights,’ but only that Complainant has a bona fide basis for making
the Complaint in the first place); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some jurisdiction.).
Respondent’s <wakovia.com>
domain name is confusingly similar to Complainant’s WACHOVIA mark because the
domain name fully incorporates the mark and merely substitutes the letters “ch”
with “k.” Complainant asserts that this
substitution of letters in Complainant’s WACHOVIA mark might lead Internet
users to believe that Complainant sponsors the domain name because the domain
name is phonetically the same as the mark.
See Hewlett-Packard Co. v.
Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy); see also VeriSign,
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also YAHOO!
Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain
name <yawho.com> is confusingly similar to Complainant’s YAHOO mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have such rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate interest does exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
using the disputed domain name to redirect Internet users to a website that
features pop-up advertisements for an array of services and hosts a search
engine to link viewers to a variety of websites, including sites that offer the
same type of goods and services that Complainant offers online. Respondent’s use of the domain name, which
is confusingly similar to Complainant’s WACHOVIA mark, to redirect Internet
users interested in Complainant’s products to a commercial website that links
to financial-related websites and pop-up advertisements is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii). See Wells
Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18,
2003) (holding that Respondent’s use of confusingly
similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users
to websites featuring pop-up advertisements was not a bona fide offering of
goods or services); see also Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because Respondent's sole purpose in selecting the domain names
was to cause confusion with Complainant's website and marks, its use of the
names was not in connection with the offering of goods or services or any other
fair use); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat.
Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain
name, a simple misspelling of Complainant’s mark, to divert Internet users to a
website that featured pop-up advertisements and an Internet directory, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Furthermore,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” as one
factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Am.
Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000)
(finding no rights or legitimate interest in the misspelled domain name
<amaricanairlines.com> because
Respondent was not authorized to use Complainant's mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered a domain name that consists of a likely misspelling of Complainant’s
well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users seeking Complainant’s goods or services to Respondent’s commercial
website through the use of a domain name that is confusingly similar to
Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s WACHOVIA mark.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to commercial
websites and Respondent fails to contest the Complaint, it may be concluded
that Respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO
Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the
recognition that eBay has created for its mark and therefore profiting by
diverting users seeking the eBay website to Respondent’s site).
Respondent is
using the <wakovia.com> domain name to advertise a search engine
and links to financial-related websites.
Complainant’s business provides banking and financial services to
individuals and businesses throughout the world. The Panel finds that, by creating confusion around Complainant’s
WACHOVIA mark, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use of a
domain name confusingly similar to Complainant’s mark to sell services similar
to Complainant’s goods and services is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
Respondent registered and used the domain name <eebay.com> in bad faith
where Respondent has used the domain name to promote competing auction sites); see
also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and
used the domain name primarily for the purpose of disrupting the business of
Complainant by offering personal e-mail accounts under the domain name <openmail.com>
which is identical to Complainant’s services under the OPENMAIL mark).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wakovia.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: February 15, 2005
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