Wells Fargo & Company v. Sergy Selivanov
Claim Number: FA0901001241104
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 <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 7, 2009.
On
On January
9, 2009, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 29, 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@wwwwellsfargocom.org, postmaster@wellafargo.net, postmaster@wellsgargo.net, postmaster@wellsfrago.org, postmaster@wellesfargo.net, postmaster@wellsfsrgo.net, postmaster@wellsfarg.net, postmaster@wellsfaro.biz, postmaster@weellsfargo.net, postmaster@wellsargo.net, postmaster@wellsforgo.net, postmaster@wellsafargo.net, postmaster@wellsfrgo.net, postmaster@wellsfargp.net, postmaster@wwellsfargo.net, postmaster@wllsfargo.net, and postmaster@ellsfargo.net 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 James A. Carmody, Esq., 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 <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net> domain names.
3. Respondent registered and used the <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a diversified financial services company providing banking, insurance, investments mortgages, and consumer finance for more than 27 million customers. Complainant holds numerous registrations of its WELLS FARGO with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 779,187 issued October 27, 1964).
Respondent registered the <wwwwellsfargocom.org>, <wellafargo.net>,
<wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>,
<wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>,
<weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>,
<wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>,
<wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net>
domain names on
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 Complainant has sufficiently established rights in the WELLS FARGO mark under Policy ¶ 4(a)(i) because it holds a registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); 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.").
Almost every one of the disputed domain names contains a misspelling of Complainant’s mark by merely adding or deleting letters. The one exception is the <wwwwellsfargocom.org> domain name that contains Complainant’s entire mark, adds “www” to the front of Complainant’s mark, and “com” to the end of Complainant’s mark. Furthermore, all of the disputed domain names add a top-level domain to the respective misspelling. None of the aforementioned alterations to Complainant’s mark distinguish any of the disputed domain names from Complainant’s mark for the purposes of confusing similarity. Therefore, the Panel finds that all of the <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net> domain names are confusingly similar with Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); 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 Policy ¶ 4(a)(i) has been satisfied.
In the beginning, Complainant must make a prima facie showing that Respondent
lacks rights and legitimate interests in the disputed domain names. The burden then shifts to Respondent and
Respondent must establish that it has rights or legitimate interests in the
disputed domain names. The Panel finds
that Complainant has sufficiently made its prima
facie showing under Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Furthermore, because Respondent has failed to respond to Complainant’s allegations, the Panel may presume that Respondent lacks rights and legitimate interests. However, the Panel will still analyze the record under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
All of the disputed domain names resolve to very similar
websites, which contain several hyperlinks to various third-party websites,
some of which are in direct competition with Complainant. Accordingly, the Panel infers that Respondent
receives click-through fees for these hyperlinks. The Panel finds that this is a diversion of
Internet users for Respondent’s commercial benefit, and is therefore 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). See ALPITOUR S.p.A. v. balata
inc, FA 888649 (Nat. Arb. Forum
In addition, Respondent is listed in the WHOIS information
as “Sergy Selivanov,” which does not
indicate that it is commonly known by any of the disputed domain names. Respondent has not offered any evidence to
indicate otherwise. The Panel thus finds
that Respondent is not commonly known by the disputed domain names under Policy
¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Finally, Respondent’s disputed domain names take advantage
of common misspellings of Complainant’s WELLS FARGO mark. The Panel finds that these actions constitute
typosquatting, and is evidence that Respondent lacks rights and legitimate interests
in the disputed domain names under Policy ¶ 4(a)(ii). See Black & Decker Corp. v. Khan, FA
137223 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of
Complainant’s WELLS FARGO mark in
the disputed domain
names to divert Internet users to
Complainant’s competitors suggests that Respondent registered the disputed
domain names intending to disrupt Complainant’s business. The Panel finds that this is evidence of bad
faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
Complainant’s competitors. Because
Respondent’s domain names are confusingly similar to Complainant’s WELLS
FARGO mark, Internet users accessing
Respondent’s disputed domain names may become confused as to Complainant’s
affiliation or sponsorship with the resolving websites. Respondent is attempting to profit from this
confusion via the click-through-fees.
Thus, Respondent’s use of the disputed domain names constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum
Furthermore, the Panel finds that it may consider the
totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis,
and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO
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 <wwwwellsfargocom.org>, <wellafargo.net>, <wellsgargo.net>, <wellsfrago.org>, <wellesfargo.net>, <wellsfsrgo.net>, <wellsfarg.net>, <wellsfaro.biz>, <weellsfargo.net>, <wellsargo.net>, <wellsforgo.net>, <wellsafargo.net>, <wellsfrgo.net>, <wellsfargp.net>, <wwellsfargo.net>, <wllsfargo.net>, and <ellsfargo.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 19, 2009
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