Wells Fargo & Company v. Chen Pong d/b/a Caoni Mabi
Claim Number: FA0812001239038
Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah
Shinbein, of Faegre & Benson, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 19, 2008.
On January 7, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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
14, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 3, 2009
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@wellsfargo.info, postmaster@wellfargoautofinancing.com, postmaster@wellfargofinancing.com, postmaster@wellfargocom.com, postmaster@wwwwallsfargo.com, postmaster@wellfarego.com, and postmaster@wellsfar4go.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wellsfargo.info> domain name is identical to Complainant’s WELLS FARGO mark. Respondent’s <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names.
3. Respondent registered and used the <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a banking
corporation that offers many financial services in banking and investing. Complainant began in 1852 when the
opportunity created by the Gold Rush lead to the opening of a Wells Fargo
office to weigh and store gold in
Respondent, Chen Long d/b/a Caoni Mabi, registered the disputed domain names between February and October of 2008. The disputed domain names resolve to websites containing links to Complainant’s competitors and logos similar to Complainant.
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.
The Panel finds that registration of Complainant’s mark with
the USPTO is sufficient to establish Complainant’s rights in the WELLS FARGO
mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s]
mark is registered with the USPTO, [the] complainant has met the requirements
of Policy ¶ 4(a)(i).”); see also Miller Brewing
The
<wellsfargo.info> domain name is identical to Complainant’s WELLS
FARGO mark pursuant to Policy ¶ 4(a)(i).
Respondent has incorporated Complainant’s entire mark into the disputed
domain name, notwithstanding the space deletion between WELLS and FARGO. Deleting said space does not create a
difference between the disputed domain name and Complainant’s mark. Rather, the disputed domain name remains
identical to Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276
(Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between
terms of a mark still rendered the <gwbakeries.mobi> domain name
identical to the complainant’s GW BAKERIES mark). The addition of the generic top-level domain (“gTLD”) “.info” to
Complainant’s mark is irrelevant in determining identicality under Policy ¶
4(a)(i). See Microsoft
Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is
identical to Complainant’s WINDOWS mark as the addition of a gTLD is a
necessary addition in the creation of any domain name and therefore an
indistinguishing characteristic under Policy ¶ 4(a)(i).“).
The <wellfargoautofinancing.com>, <wellfargofinancing.com>,
and <wellfargocom.com> domain names are confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent’s superficial alterations,
elimination of the “s” in WELLS and addition of generic terms, do not
differentiate the disputed domain names from Complainant’s mark. Nor does the addition of the generic
top-level domain (“gTLD”) “.com” alleviate potential confusion as the gTLD is a
requirement for any Internet address. See Universal City Studios, Inc. v.
HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the
letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change
the overall impression of the mark and thus made the disputed domain name
confusingly similar to it); see also Arthur
Guinness Son & Co. (
Respondent’s
<wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com>
domain names are also confusingly similar to Complainant’s mark
pursuant to Policy
¶ 4(a)(i). Altering
the spelling of WELLS to “walls” and
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has indeed established a prima facie case pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).
Respondent has not answered the Complaint; therefore, the Panel chooses to examine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). The Panel may accept the allegations in the Complaint as true unless clearly contradicted by the evidence. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
The disputed domain names resolve to landing sites that display links to third-party commercial websites, many of which are Complainant’s competitors. Respondent’s websites are presumed to be pay-per-click websites with Respondent garnering referral fees when Internet users click through the advertised links. Respondent’s use of the disputed domain names diverts Internet users from Complainant through the use of its own mark leading unsuspecting Internet users to assume an association to Complainant. The Panel finds that this is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain names 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 Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
The WHOIS information for Respondent lists the registrant as “Chen Long.” Without further evidence, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the disputed domain
names disrupts Complainant’s business and intentionally exploits the good
reputation of Complainant’s mark. Use of
the disputed domain names in this manner is evidence of bad faith registration
and use on the part of Respondent pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
The use of the disputed domain names as commercial entities where
Respondent is rewarded when Internet users mistakenly click through to
Complainant’s competitors demonstrates bad faith registration and use of the
disputed domain names by Respondent pursuant to Policy ¶ 4(b)(iv). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the
respondent was taking advantage of the confusing similarity between the
<lilpunk.com> domain name and the complainant’s LIL PUNK mark by using
the contested domain name to maintain a website with various links to
third-party websites unrelated to Complainant, and that such use for the
respondent’s own commercial gain demonstrated bad faith registration and use
pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar
domain name to display links to various third-party websites demonstrated bad
faith registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <wellsfargo.info>, <wellfargoautofinancing.com>, <wellfargofinancing.com>, <wellfargocom.com>, <wwwwallsfargo.com>, <wellfarego.com>, and <wellsfar4go.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 20, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum