Wells Fargo & Company v. John Doe as
Holder of Domain Name <wellsifargo.com>
Claim
Number: FA0504000466104
Complainant is Wells Fargo & Company (“Complainant”),
represented by Ester Martin Maillaro of Faegre & Benson, LLP,
1900 15th St., Boulder, CO 80302.
Respondent is John Doe as Holder
of Domain Name <wellsifargo.com> (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wellsifargo.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 25, 2005.
On
April 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <wellsifargo.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 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@wellsifargo.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 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <wellsifargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <wellsifargo.com> domain name.
3. Respondent registered and used the <wellsifargo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Wells Fargo & Company, is a diversified
financial services company that provides banking, insurance, investments,
mortgages, and consumer fiance services for over 27 million customers through
over 6,000 locations. Complainant has
over $422 billion in assets, issues approximately 6 million credit card
accounts and has about 146,000 employees.
In 2003, Complainant was the number one originator of home mortgages in
the United States.
Complainant holds numerous registrations with United States Patent and
Trademark Office (“USPTO”) for its WELLS FARGO family of marks, including its
WELLS FARGO mark (Reg. No. 779,187 issued October 27, 1964). In addition, Complainant holds international
registrations for its marks with several trademark authorities throughout the
world. Complainant has provided
financial and related products and services under its WELLS FARGO and
associated marks since 1852.
Additionally, Complainant holds the registration for the
<wellsfargo.com> domain name.
Complainant has operated a website at this domain name since 1994, where
the public can access information about Complainant’s products and services.
Respondent registered the <wellsifargo.com> domain name on April 7, 2005. Approximately one day following this
registration, the domain name resolved to a website that appeared to be a copy
of the customer login page of Complainant’s website at the
<wellsfargo.com> domain name.
Once customers entered their login name and password, they were directed
to a page resembling a security page that informed them that there was a
problem logging them in and requesting their personal information to verify
their identity. The purpose of this
type of “phishing” website is to fraudulently obtain customers’ personal
information for Respondent’s own use.
Later that same day, the website was disabled and the website began
displaying a standard error message indicating that the website could no longer
be accessed.
Furthermore,
although Respondent has not filed a formal response, Respondent has been in
contact with Complainant and is claiming that Respondent did not register the <wellsifargo.com>
domain name and that the domain name was registered by someone else using
Respondent’s name and address. As a
result of Complainant’s research, Complainant verified that the domain name was
registered using Respondent’s name, address and a phone number that differed
from Respondent’s by one digit.
Furthermore, Respondent has indicated that the e-mail address listed in
the WHOIS information is not that of Respondent. Due to these circumstances, Complainant has determined that
Respondent is likely an innocent victim of identity theft and has asked that
the name listed in the WHOIS information not be used in this decision.
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
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 alleged fraud. Complainant
further requests that Respondent’s personal information be omitted from the
decision and that the Respondent’s identity be listed as "John Doe as
Holder of Domain Name <wellsifargo.com>."
The Panels
in Wells Fargo and Co. v. John Doe as Holder of Domain Name
<wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells
Fargo and Co. v. John Doe as Holder of Domain Name <wellsfargossl>,
FA 453727 (Nat. Arb. Forum May 19, 2005), adopted this approach
in an identical circumstance, where the named respondents claimed to be victims
of identity theft. The Uniform Domain
Name Dispute Resolution Policy ¶ 4(j) indicates that "[a]ll 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 determines that the current
circumstances warrant such action.
Complainant has
established with extrinsic proof in this proceeding that it has presumptive
rights in the WELLS FARGO mark through registration with the USPTO. Since Respondent has not submitted a
response to dispute Complainant’s prima facie case of rights, the Panel
finds that Complainant has rights in the WELLS FARGO mark for purposes of
Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <wellsifargo.com>
domain name registered by Respondent includes Complainant’s WELLS FARGO mark in
its entirety and merely adds the letter “i” and the generic top-level domain
(“gTLD”). It has been widely held under
the Policy that the additions of a letter and a gTLD to a complainant’s
registered mark are insufficient to differentiate the domain name from the
mark. Thus, the Panel finds that Respondent’s
domain name is confusingly similar to Complainant’s mark in accordance with
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Am. Online, Inc. v. Tencent
Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding
that <oicq.net> and <oicq.com> are confusingly similar to
Complainant’s mark, ICQ); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent’s
failure to submit a response to the allegations of the Complaint entitles the
Panel to accept all reasonable allegations and inferences in the Complaint as
true unless clearly contradicted by the evidence. 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 Bayerische Motoren
Werke AG v. Bavarian AG, FA
110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
response a panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Complainant
asserts that Respondent has no rights or legitimate interests in the <wellsifargo.com>
domain name that contains Complainant’s WELLS FARGO mark in its entirety. Complainant has made a prima facie case in support of its allegations, so the burden
shifts to Respondent to make a showing that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
However, Respondent has failed to respond to Complainant’s allegations
and to provide evidence of rights or legitimate interests. Respondent has, therefore, failed to meet
its burden and the Panel concludes that Respondent lacks rights and legitimate
interests in the disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that, once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to that 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 a complainant that a respondent
has no rights or legitimate interests is sufficient to shift the burden of
proof to that respondent to demonstrate that such rights or legitimate
interests do exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that the respondent has no rights or legitimate
interests in the domain name because the respondent never submitted a response
or provided the panel with evidence to suggest otherwise).
The <wellsifargo.com>
domain name has resolved to a website that displayed a copy of the login page
at Complainant’s <wellsfargo.com> website. This page was set up so that Internet users who attempted to
login using their login name and password would be led to a website that warned
them of a possible security issue and requested their personal
information. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
well-known WELLS FARGO mark to redirect Complainant’s potential customers to
Respondent’s website for the purpose of obtaining their personal information
through fraudulent means 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 pursuant to Policy ¶ 4(c)(iii). See 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 Acquisitions, 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); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where Respondent attempted to
profit using Complainant’s mark by redirecting Internet traffic to its own
website); see also State Farm Mut.
Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)
(“[U]nauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”).
Complainant
claims that there is no evidence that Respondent is commonly known by the <wellsifargo.com>
domain name. Furthermore, Complainant
asserts that Respondent has never been a licensee of Complainant. Since Respondent has not filed a response or
provided any evidence to refute Complainant’s assertions, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Hartford
Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29,
2000) (finding that Respondent has no rights or legitimate interests in domain
names because it is not commonly known by Complainant’s marks and Respondent
has not used the domain names in connection with a bona fide offering of goods
and services or for a legitimate noncommercial or fair use).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Policy lists
four circumstances under Policy ¶ 4(b), which constitute evidence of bad faith
registration and use. However, this
list is not intended to be comprehensive, and the Panel has, therefore, chosen
to consider additional factors which support its finding of bad faith
registration and use. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad
faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”).
The <wellsifargo.com>
domain name, which is a confusingly similar variation of Complainant’s
WELLS FARGO mark, is being used by Respondent to fraudulently retrieve personal
and financial information from Complainant’s customers. The Panel finds that this scheme, known as
“phishing,” is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Juno Online Servs., Inc.
v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding bad faith
where the website was being used for a “phishing” scheme and Respondent
asserted “that an unknown perpetrator
stole his identity and registered the disputed domain name for purposes of the
fraudulent scheme alleged by Complainant”); see also 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 Halifax
plc v. Sunducl, D2004-0237 (WIPO June 3,
2004) (“[T]he apparent potential for
“phishing” and obtaining information by deception, is not just evidence of bad
faith but possibly suggestive of criminal activity. It is accepted that on this
basis there is no other possibility than the site being registered in bad
faith.”); see also Hewitt Associates LLC v. Cuff, FA
376375 (Nat. Arb. Forum Feb. 3, 2005) (finding that
the respondent’s scheme of registering a confusingly similar domain name to
fraudulently obtain personal information from Internet users by purporting to
be the complainant is known as “phishing” and is evidence of bad faith
registration and use).
Respondent
registered the <wellsifargo.com> domain name, which contains
Complainant’s WELLS FARGO mark in its entirety, and resolved the domain name to
a website that was nearly identical to Complainant’s website. These circumstances indicate that Respondent
had actual knowledge of Complainant’s rights in the mark. Furthermore, Complainant’s registration of
its WELLS FARGO mark with the USPTO bestows constructive knowledge upon
Respondent of Complainant’s rights in the mark. Respondent’s registration of a domain name confusingly similar to
another’s mark despite actual or constructive knowledge of another’s rights in
the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”); see also Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wellsifargo.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
June 3, 2005
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