Wells Fargo & Company v. Domain Sales - (Expired domain caught by auction winner) c/o Dynadot
Claim Number: FA2212002024849
Complainant is Wells Fargo & Company (“Complainant”), represented by Felicia J. Boyd of Norton Rose Fulbright US LLP, USA. Respondent is Domain Sales - (Expired domain caught by auction winner) c/o Dynadot (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wellsfargovantage.com>, (‘the Domain Name’) registered with Dynadot, LLC.
The undersigned certifies that 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on December 20, 2022; Forum received payment on December 20, 2022.
On Dec 21, 2022, Dynadot, LLC confirmed by e-mail to Forum that the <wellsfargovantage.com> Domain Name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2023 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@wellsfargovantage.com. Also on December 21, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark WELLS FARGO in the USA for financial services used since 1852. The mark is well known. It also owns the trade mark WELLS FARGO VANTAGE registered in the European Union since November 12, 2022.
On or around June 23, 2022 and in the following weeks, Complainant submitted applications for its trademark WELLS FARGO VANTAGE in Canada, the United States, the European Union and other countries worldwide. Shortly thereafter, on July 7, 2022, Respondent registered the Domain Name.
Respondent is not commonly known by the Domain Name and has not been authorized by the Complainant.
The Domain Name has been pointed to a page offering the Domain Name for sale generally for a sum well in excess of costs of registration which is not a bona fide offering of goods and services or a legitimate noncommercial fair use. The Respondent does not have rights or a legitimate interest in the Domain Name.
The distinctive nature of the Complainant’s mark and the registration of the Domain Name shortly after the Complainant applied for its registration for that mark shows that the Respondent was aware of the Complainant and its rights at the time of registration of the Domain Name and has registered the Domain Name in opportunistic bad faith. Registering a domain name containing a third party mark with a reputation and offering it for sale is bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark WELLS FARGO in the USA for financial services used since 1852. The mark is well known. It also owns the trade mark WELLS FARGO VANTAGE registered in the European Union since November 12, 2022.
On or around June 23, 2022 and in the following weeks, Complainant submitted applications for its trademark WELLS FARGO VANTAGE in Canada, the United States, the European Union and other countries worldwide. Shortly thereafter, on July 7, 2022, Respondent registered the Domain Name. The Domain Name points to a page offering it for sale generally for a sum well in excess of costs of registration.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant owns, inter alia, the trade mark WELLS FARGO registered in the USA for financial services with first use in commerce recorded as 1852. It also owns the trade mark WELLS FARGO VANTAGE registered in the European Union since November 12, 2022.
The gTLD “.com” does not serve to distinguish a domain name from a complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
The Domain Name contains both of the Complainant’s marks in their entirety. Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s WELLS FARGO mark and identical to its WELLS FARGO VANTAGE mark for the purposes of the Policy.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Name has been offered for sale generally. A general offer for sale may provide evidence of a lack of rights and legitimate interests in a domain name containing a trade mark. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale”… provides evidence that Respondent lacks rights and legitimate interests in a disputed domain name). Here the Domain Name contains both of the Complainant’s marks including the WELLS FARGO mark registered since 1852 and has been offered for sale for a sum well in excess of costs of registration. This is not a bona fide offering of goods or a legitimate non-commercial or fair use.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The particular combination in the Domain Name of WELLS FARGO and VANTAGE indicates that the Respondent had actual knowledge of the Complainant’s rights, and the timing of the registration of the Domain Name less than a month after Complainant filed applications to register the mark WELLS FARGO VANTAGE demonstrates that the Domain Name has been registered in opportunistic bad faith to disrupt the Complainant’s business. See Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website).
Bad faith registration and use of a domain name containing a trade mark may be found, under Policy ¶ 4(b)(i), where a respondent offers it for sale generally. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The Domain Name contains both of the Complainant’s marks including the WELLS FARGO mark registered since 1852 and has been offered for sale for a sum well in excess of costs of registration.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(i) and (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 <wellsfargovantage.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 12, 2023
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