Wachovia Corporation v. I D L and R G
Claim
Number: FA0507000523308
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 I D L and R G (“Respondent”), Kalian, Bhilowal, Hoshiarpur,
Punjab 146104, India.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wachoviainsuranceservices.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 July
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 27, 2005.
On
Jul 26, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the <wachoviainsuranceservices.com>
domain name is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and
that Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a Dotregistrar.com
has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com 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
August 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 22, 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@wachoviainsuranceservices.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 28, 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.
A. Complainant makes the following assertions:
1. Respondent’s <wachoviainsuranceservices.com>
domain name is confusingly similar to Complainant’s WACHOVIA mark.
2. Respondent does not have any rights or
legitimate interests in the <wachoviainsuranceservices.com> domain
name.
3. Respondent registered and used the <wachoviainsuranceservices.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Wachovia Corporation, is a bank holding
company, which owns numerous subsidiary companies that are engaged in providing
a variety of banking, financial and insurance services throughout the world
under the WACHOVIA family of marks.
Through its subsisiaries, Wachovia Insurance Services, Inc. and Wachovia
Insurance Agency, Inc., Complainant offers life, executive beneifts, property
and casualty, group health and welfare and risk management insurance services.
Complainant holds numerous trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for its WACHOVIA family of marks,
including multiple registrations for its WACHOVIA mark (Reg. No. 883,529 issued
December 30, 1969; Reg. No. 1,729,833 issued November 3, 1992; and Reg. No.
1,735,242 issued November 24, 1992).
Complainant has used its WACHOVIA mark since 1879 when Wachovia National
Bank was first created.
Complainant has spent tens of millions of dollars to promote its banking
and financial services under the WACHOVIA family of marks throughout the world
via television, radio, newspaper, magazines, direct mail, brochures, fliers and
other print publications. In addition,
Complainant markets its services through its websites at the
<wachovia.com> and <wachoviainsurance.com> domain names.
Respondent registered the <wachoviainsuranceservices.com> domain name on December 15, 2004. The disputed domain name resolves to a
website at the <domainsponsor.com> domain name, which displays links to
various products and services, including some that offer competing insurance
services. Presumably, Respondent earns
commissions from Domainsponsor.com for redirecting Internet users via Respondent’s
domain name.
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. 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 (Nat. Arb. 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.”).
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
provided evidence of its registration of the WACHOVIA mark with the USPTO. Complainant’s registration of its mark with
a federal authority is sufficient to establish a prima facie case of
Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("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."); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The <wachoviainsuranceservices.com> domain name includes Complainant’s
WACHOVIA mark in its entirety and adds the generic top-level domain (“gTLD”)
“.com” and the generic or descriptive terms “insurance” and “services,” which
are descriptive of Complainant’s insurance business. These minor additions to Complainant’s federally registered mark
are insufficient to render the disputed domain name distinct from Complainant’s
mark. Therefore, the domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3,
2000) (finding that four domain names that added the descriptive words
"fashion" or "cosmetics" after the trademark were
confusingly similar to the trademark); see also Gardline Surveys Ltd.
v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
It has been established
under the Policy that the complainant has the initial burden of proving that
the respondent lacks rights and legitimate interests in the disputed domain
name. In Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001),
the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden by establishing a prima facie
case, the Panel will now analyze whether Respondent has met its burden to
establish rights or legitimate interests in the disputed domain name under
Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <wachoviainsuranceservices.com>
domain name and that Complainant has not licensed or otherwise authorized
Respondent to use any version of Complainant’s mark for any purpose. The WHOIS information for the disputed
domain name lists Respondent as “I D L and R G” and identifies no other
connection between Respondent and the disputed domain name. Because Respondent has failed to respond to
any of Complainant’s contentions, the Panel is left with no evidence to rebut
Complainant’s assertions that Respondent is not commonly known by the disputed
domain name. Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum
Dec. 1, 2004) (finding that because Respondent failed to submit a Response,
“Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel
accepts as true all reasonable allegations . . . unless clearly contradicted by
the evidence.”).
Complainant
provides evidence that the <wachoviainsuranceservices.com> domain
name resolves to a website that displays links to various products and
services, some of which compete with Complainant’s insurance services. Respondent’s commercial use of a domain name
that contains Complainant’s WACHOVIA mark, presumably for the purpose of
earning referral fees, is not in connection with a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii).”); see also Am. Online, Inc. v.
Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26,
2003) (“Respondent's registration and use of the <gayaol.com> domain name
with the intent to divert Internet users to Respondent's website suggests that
Respondent has no rights to or legitimate interests in the disputed domain name
pursuant to Policy Paragraph 4(a)(ii).”); see also WeddingChannel.com
Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that
the respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Additionally, in failing to submit a response to Complainant’s
contentions, Respondent has failed to provide any evidence that would challenge
Complainant’s prima facie case.
The Panel, therefore, finds that Respondent has not established rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or
(iii). See Broadcom
Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004)
(“Respondent’s failure to respond to the Complaint functions as an implicit
admission that [Respondent] lacks rights and legitimate interests in the
disputed domain name. It also allows
the Panel to accept all reasonable allegations set forth…as true.”).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <wachoviainsuranceservices.com>
domain name resolves to a website that displays numerous links to a variety of
products and services, including insurance services of Complainant’s
competitors. Furthermore, Respondent’s
use of Complainant’s WACHOVIA mark in the disputed domain name creates a
likelihood of confusion through which Respondent attracts Internet users to
Respondent’s website for commercial gain.
Respondent’s practice of diversion for commercial gain is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website).
Due to
Complainant’s numerous registrations of its WACHOVIA marks with the USPTO,
Respondent had constructive notice of Complainant’s rights in the marks when
Respondent registered the <wachoviainsuranceservices.com> domain
name. Furthermore, Complainant’s
WACHOVIA mark has developed substantial fame and goodwill because of
Complainant’s extensive advertising efforts throughout the world, which
suggests that Respondent had actual knowledge of Complainant’s rights. Additionally, the likelihood of Respondent’s
actual knowledge is evidence by Respondent’s addition of the phrase “insurance
services” to Complainant’s mark in the domain name, because this phrase is
obviously related to Complainant’s insurance business. Respondent’s registration of a domain name
that includes Complainant’s mark with actual or constructive knowledge of
Complainant’s rights in the mark is evidence of bad faith registration and use
under Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that
“there is a legal presumption of bad faith, when Respondent reasonably should
have been aware of Complainant’s trademarks, actually or constructively”); see
also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal
Register registration [of a trademark or service mark] is constructive notice
of a claim of ownership so as to eliminate any defense of good faith adoption”
pursuant to 15 U.S.C. § 1072); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the
respondent’s registration and use of an identical and/or confusingly similar
domain name was in bad faith where the complainant’s BEANIE BABIES mark was
famous and the respondent should have been aware of it).
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 <wachoviainsuranceservices.com> domain name be
TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
September 6, 2005
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