Wells Fargo & Company v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1111001417720
Complainant is Wells Fargo & Company (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwwellfargo.com>, registered with Fabulous.com Pty Ltd.
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 November 30, 2011; the National Arbitration Forum received payment on December 1, 2011.
On November 30, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wwwwellfargo.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wwwwellfargo.com. Also on December 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2012, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <wwwwellfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wwwwellfargo.com> domain name.
3. Respondent registered and used the <wwwwellfargo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a financial services company with $422 billion in assets and 281,000 employees. It provides banking, insurance, investments, mortgages, and consumer finance for over 27 million customers at over 6,000 locations. Complainant has provided these services to the public under the WELLS FARGO mark since 1852 and owns many trademarks with the United States Patent and Trademark Office (“USPTO”) for its WELLS FARGO mark (e.g., Reg. No. 779,187 issued October 27, 1964).
Respondent Privacy Ltd. Disclosed Agent for YOLAPT registered the <wwwwellfargo.com> domain name on July 4, 2003. The disputed domain name resolves to a website that displays third-party links to businesses that offer checking, banking, and other financial services that are in direct competition with Complainant’s services, as well as unauthorized links to Complainants website.
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 owns many trademark registrations for the WELLS FARGO family of marks with the USPTO (e.g., Reg. No. 779,187 issued October 27, 1964). The Panel finds that Complainant has established rights in the WELLS FARGO mark under Policy ¶ 4(a)(i) via its trademark registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that a trademark registration need not be in the country wherein Respondent resides under Policy ¶ 4(a)(i). See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that the disputed domain name <wwwwellfargo.com> is confusingly similar to its WELLS FARGO mark. Complainant argues that (1) adding the prefix “www” without the standard period separating the prefix from the remainder of the disputed domain name, (2) removing the “s,” (3) deleting the space between the words “well” and “fargo,” and (4) attaching the generic top-level domain (“gTLD”) “.com” are not adequate to differentiate the disputed domain name from Complainant’s mark. The Panel finds that adding the prefix “www” while omitting the period between the prefix “www” and “wellfargo,” as well as deleting the “s” in the term “WELLS,” does not sufficiently distinguish the disputed domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Additionally, the Panel finds that deleting a space between the words “well” and “fargo,” as well as adding a gTLD to a mark does not render the disputed domain name distinct under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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 accordingly concludes that Respondent’s <wwwwellfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the <wwwwellfargo.com> domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant has the burden to make a prima facie showing that Respondent does not have rights and legitimate interests in the disputed domain name. If Complainant successfully produces a prima facie case, the burden of proof shifts to Respondent to show why it does have rights or legitimate interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”). The Panel concludes that Complainant has successfully produced a prima facie case. Because Respondent failed to respond to these proceedings, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also 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.”). However, the Panel will examine the record to establish whether Respondent owns rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information available states that Respondent goes by the name “Privacy Ltd. Disclosed Agent for Yolapt” and does not show any evidence of Respondent being commonly known by the disputed domain name <wwwwellfargo.com>. The Panel finds that absent conclusive evidence of Respondent being commonly known by the disputed domain name, Respondent does not have rights and legitimate interests in <wwwwellfargo.com> under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);see also Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark).
Complainant further argues that Respondent’s disputed domain name <wwwwellfargo.com> is not being used in a manner constituting a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). Respondent’s disputed domain name <wwwwellfargo.com> leads Internet users to a generic site displaying links to various third-party sites offering “Online Checking,” “Free Checking Acct Online,” and “Net Deposit,” all of which are in direct competition with Complainant’s business. Complainant argues that Respondent likely receives pay-per-click profit when Internet users click these links. The Panel concludes that Respondent’s use of the disputed domain name to redirect visitors to competitor’s websites does not fall under 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant argues that Respondent’s intentional misspelling of the WELLS FARGO mark within the <wwwwellfargo.com> domain name capitalizes on Internet users’ common typing mistakes when attempting to access Complainant’s website. The Panel concludes Respondent’s registration of the disputed domain name is typosquatting and is evidence that Respondent lacks rights or legitimate interests in the <wwwwellfargo.com> pursuant to Policy ¶ 4(a)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (finding no rights or legitimate interests where the respondent merely redirected the <wwwmedline.com> domain name to the complainant’s own website at <medline.com>); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s use of the <wwwwellfargo.com> domain name to redirect Internet users to websites in competition with Complainant’s business is a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). The Panel concludes that Respondent’s registration and use of the disputed domain name amounts to bad faith because the disputed domain name disrupts Complainant’s business by referring visitors to competitors’ websites. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s use of the disputed domain name to redirect Internet users for Respondent’s own profit is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant contends that the <wwwwellfargo.com> domain name generates confusion between the disputed domain name and the WELLS FARGO mark. Complainant asserts that Respondent stands to profit by collecting “click-through” fees paid by websites advertising competitive websites like “Online Checking Account,” “Personal Banking,” etc., as well as links to Complainant’s own website. The Panel concludes that Respondent’s intentional effort to draw visitors to its website for commercial gain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues that the disputed domain name <wwwwellfargo.com> is evidence of bad faith registration and use because it employs typosquatting to take advantage of Internet users. Previous panels have determined that typo squatting, as defined under the Policy, demonstrates bad faith registration and use. See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use). Therefore, the Panel finds that Respondent is engaging in typosquatting and as a result, has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <wwwwellfargo.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 4, 2012
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