Wells Fargo & Company v. John Doe as
Holder of Domain Name <wellsfargossl.com>
Claim
Number: FA0504000453727
Complainant is Wells Fargo & Company (“Complainant”),
represented by Ester Martin Maillaro, of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is John Doe as
Holder of Domain Name <wellsfargossl.com> (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wellsfargossl.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 11, 2005.
On
April 10, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain name <wellsfargossl.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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
April 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 3, 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@wellsfargossl.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
May 6, 2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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.
Complainant has
submitted evidence that Respondent, as named in Whois, is merely a victim
of identity theft and that the actual identity of Respondent is unknown. Complainant requests that any references
to Respondent as listed in the Whois database be omitted from all
publicly available material in an effort to protect the victim from further
injury as a result of the fraud.
Complainant further requests that all references
to Respondent be replaced with the following moniker: “John Doe as
Holder of Domain Name <wellsfargossl.com>.”
The Panel in Wells
Fargo and Company v. John Doe as Holder of Domain Name <wellzfargo.com>,
FA 362108 (Nat. Arb. Forum Dec. 30, 2004) adopted this approach
in an identical circumstance, where the named Respondent was, in fact, a victim
of identity theft. The Uniform Domain Name Dispute Resolution Policy ¶
4(j) indicates that “All decisions under this Policy will be published in full
over the Internet, except when an Administrative Panel determines in an
exceptional case to redact portions of its decision.” This Panel has determined that the current
circumstances warrant such action.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargossl.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <wellsfargossl.com> domain name.
3. Respondent registered and used the <wellsfargossl.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, provides quality banking, financial and related
goods and services. Complainant owns
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the WELLS FARGO mark (Reg. No. 779,187 issued October 27,
1964 for banking and trust services, Reg. No. 1,167,626 issued September 1,
1981 for real estate brokerage and Reg. No. 1,273,144 issued April 3, 1984 for
armored trucks and structural parts).
Complainant also holds trademark registrations for the WELLS FARGO mark
in jurisdictions throughout the world.
Complainant has used the WELLS FARGO mark in commerce since 1852.
Complainant
registered and uses the <wellsfargo.com> domain name to inform the public
and Complainant’s customers of the broad array of services that Complainant
offers. Many of these services are
offered to Complainant’s customers directly through its websites.
Respondent
registered the <wellsfargossl.com> domain name March 31,
2005. Respondent is using the disputed
domain name to feature a replica of Complainant’s website customer log-in page,
in order to trick unassuming Wells Fargo customers into providing valuable
personal and financial information. This scam is commonly known as “phishing.”
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 rights in the WELLS FARGO mark through registration with the USPTO
and continuous use of the mark in commerce since 1852. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); see also 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.”)
Respondent’s <wellsfargossl.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark since the
domain name incorporates the mark in its entirety and merely adds the acronym
“ssl” which stands for “secure sockets layer,” a security standard for data
protection that is commonly used in password protected websites. Such addition is not enough to overcome a
finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Space Imaging LLC
v. Brownell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Furthermore, the addition of the top-level domain “.com” and the
omission of the space between the terms in Complainant’s mark are insignificant
in making a confusing similarity determination under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It
has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”); see also Kioti
Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See 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.”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <wellsfargossl.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
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); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Furthermore, there is no indication that Respondent is either
commonly known by the <wellsfargossl.com> domain name or
authorized to register domain names featuring the WELLS FARGO mark. Thus, Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom
Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent was not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s rights
in the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question).
Moreover,
Respondent’s domain name is confusingly similar to Complainant’s WELLS FARGO
mark and is being used to acquire private customer information by fraudulent
means. Such use is neither a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Vivendi Universal
Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that
Respondent lacked rights and legitimate interests in the domain name where
Respondent copied Complainant’s website in order to steal account information
from Complainant’s customers); see also Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted
to pass itself off as Complainant online, through wholesale copying of
Complainant’s website, Respondent had no rights or legitimate interests in the
disputed domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <wellsfargossl.com> domain name, which is a confusingly
similar variation of Complainant’s WELLS FARGO mark, to fraudulently retrieve
personal and financial information from Complainant’s customers. Such use is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Monsanto Co.
v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that
Respondent's use of <monsantos.com> to misrepresent itself as Complainant
and to provide misleading information to the public supported a
finding of bad faith); see also Vivendi Universal Games v. Ballard, FA
146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where Complainant’s mark was appropriated at
registration, and a copy of Complainant’s website was used at the domain name
in order to facilitate the interception of Complainant’s customer’s account
information, Respondent’s behavior evidenced bad faith use and registration of
the domain name).
Furthermore, Respondent presumably commercially benefits by taking advantage
of consumer confusion to acquire personal and financial information via the
confusingly similar domain name. This
is evidence that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use
of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness); see also 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)).
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 <wellsfargossl.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 19, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum