Wells Fargo & Company v. Albert
Jackson
Claim
Number: FA0405000271697
Complainant is Wells Fargo & Company (“Complainant”),
represented by Adam Lindquist Scoville, of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is Albert Jackson (“Respondent”), P.O. Box
2014, George Town, Grand Cayman, Cayman Islands.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain names at issue are <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com
(hereinafter “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 (the "Forum")
electronically on May 13, 2004; the Forum received a hard copy of the Complaint
on May 17, 2004.
On
May 14, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain
names <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
are registered with Dotregistrar.com and that Respondent is the current
registrant of the names. Dotregistrar.com has verified that Respondent is bound
by the 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
May 19, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 8, 2004 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@mortgagewellsfargo.com and
postmaster@wwwwellsfargofinancial.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 16, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the Honorable Charles K. McCotter,
Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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 <mortgagewellsfargo.com>
and <wwwwellsfargofinancial.com> domain names are confusingly
similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
domain names.
3. Respondent registered and used the <mortgagewellsfargo.com>
and <wwwwellsfargofinancial.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, has provided banking and financial-related goods and
services since 1852 under the WELLS FARGO mark. Complainant has obtained
registrations for the WELLS FARGO mark worldwide, from the United States (e.g.
U.S. Reg. Nos. 779,187 and 838,059) to the Caymen Islands, Respondent’s place
of domicile (Reg. Nos. 1,273,344, 932,911 and 987,406). In addition to using
the WELLS FARGO mark worldwide in connection with banking and financial goods
and services, Complainant operates several websites incorporating the mark, and
owns both the <wellsfargo.com> and <wellsfargofinancial.com> domain
names (used by Complainant since 1994 and 2000, respectively). Complainant also
holds numerous registrations for marks that contain the WELLS FARGO mark in
addition to another word or phrase, such as the WELLS FARGO DIRECT mark (U.S.
Reg. No. 2,575,576), the WELLS FARGO FUNDS mark (U.S. Reg. No. 2,458,340) and
the WELLS FARGO ADVANTAGE mark (U.S. Reg. No. 2,640,763).
Respondent,
Albert Jackson, registered the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
domain names on August 6, 2003, long after Complainant had established rights
in the WELLS FARGO mark and had registered the <wellsfargo.com> and
<wellsfargofinancial.com> domain names. Respondent has posted no content
at the disputed domain names, but instead uses the domain names to redirect
Internet users to the <landing.domainsponsor.com> domain name, where
various pop-up advertisements are then displayed. Upon attempting to leave the
website hosted at the <landing.domainsponsor.com> domain name, a further
full-screen pop-up advertisement is generated. Domainsponsor.com, host of the
website that Respondent directs its domain names to, operates a program which
pays referral fees of up to 50% of the revenue generated from redirected
Internet users to those domain names that direct Internet users to the
Domainsponsor.com 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.
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 established rights in the WELLS FARGO mark through
registration of the mark with the appropriate governmental organizations
worldwide, as well as through widespread use of the mark in commerce for over a
century. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that 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. Respondent has the burden of refuting this
assumption).
Respondent’s <mortgagewellsfargo.com>
domain name is confusingly similar
to Complainant’s WELLS FARGO mark. With this domain name, Respondent has merely
added the word “mortgage” to Complainant’s famous WELLS FARGO mark. As
Complainant holds many trademark registrations that consist of the WELLS FARGO
mark and another word, and as Respondent chose to use a word that is relevant
to the type of business Complainant carries out under the WELLS FARGO mark,
this domain name is confusingly similar to Complainant’s mark. See
Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name incorporates a Complainant’s registered mark is sufficient
to establish identical or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
Respondent’s <wwwwellsfargofinancial.com>
domain name is also confusingly
similar to Complainant’s WELLS FARGO mark. This domain name is a classic
example of typosquatting, the deliberate use of another’s trademark (with minor
misspellings that mimic typographical errors) in order to mislead Internet
users. Here, Respondent is attempting to attract Internet users who fail
to include the period between the “www” and the words “Wells Fargo Financial”
when attempting to reach Complainant’s website at the
<wellsfargofinancial.com> domain name. As Complainant actually uses the
word “financial” in connection with its WELLS FARGO mark at its <wellsfargofinancial.com>
domain name, the disputed domain name is confusingly similar to Complainant’s
registered WELLS FARGO mark. See Bank
of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet.”); see
also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat.
Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name
confusingly similar to Complainant's registered DANA mark because Complainant's
mark remains the dominant feature).
Accordingly, the
Panel finds that the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
domain names are confusingly
similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).
The Panel infers
that Respondent is using both of the disputed domain names to generate revenue
from referral fees through its association with Domainsponsor.com. Respondent’s
use of the typosquatted <wwwwellsfargofinancial.com> domain name for this purpose is illegitimate per
se, and stands as unrebutted evidence that Respondent lacks rights and
legitimate interests in this domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the
name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacked rights or legitimate interests in the disputed domain name vis á vis
Complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat.
Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate
interests in the <wwwremax.com> domain name as it is merely using
Complainant’s mark to earn profit from pop-up advertisements).
Likewise,
Respondent’s use of the <mortgagewellsfargo.com> domain name does
not evidence any rights or legitimate interests in the domain name. Respondent
is using a confusingly similar variant of Complainant’s WELLS FARGO mark in
order to cash in on referral fees, without authorization to use the mark by
Complainant. Given the famous nature and long standing use of the WELLS FARGO
mark by Complainant, Respondent’s appropriation of Complainant’s mark for this
purpose does not equate to any of the criteria established by Policy ¶¶
4(c)(i)-(iii) that establish rights or legitimate interests in a domain name. See Wells Fargo & Co. v. Party Night Inc.,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s
WELLS FARGO mark to divert Internet users to websites featuring pop-up
advertisements was not a bona fide offering of goods or services); see also Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) (holding that Respondent’s use of the disputed domain name to
redirect Internet users to commercial websites, unrelated to Complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fees, did not evidence rights or legitimate interests in the domain name); see
also Victoria’s Secret v. Asdak,
FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that
Respondent was not commonly known by a domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
domain names under Policy ¶
4(a)(ii).
With the <wwwwellsfargofinancial.com>
domain name, Respondent chose to
register a domain name that is all but identical to Complainant’s
<wellsfargofinancial.com> domain name. By acting as a typosquatter, and
by using this domain name to gain referral fees, Respondent registered and used
this domain name in bad faith. See Canadian Tire Corp., Ltd. v.
domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May
22, 2003) (“The absence of a dot between the “www” and “canadiantire.com” [in
the <wwwcanadiantire.com> domain name is] likely to confuse Internet
users, encourage them to access Respondent’s site” and evidenced bad faith
registration and use of the domain name.); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”).
The <mortgagewellsfargo.com>
domain name was also registered and used in bad faith. Respondent had no right
to use the WELLS FARGO mark in a domain name, but nevertheless chose to attempt
to capitalize on the goodwill that Complainant has built up around this mark in
order take advantage of Domainsponsor.com’s referral program. Respondent’s
registration evidences Respondent’s knowledge of the strength of Complainant’s
WELLS FARGO mark, and Respondent’s subsequent use of the domain name dilutes
that same mark. These circumstances are evidence that this domain name was also
registered and used in bad faith. See Bank of Am. Corp. v. Out Island
Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed
domain names contain entire versions of Complainant’s marks and are used for
something completely unrelated to their descriptive quality, a consumer
searching for Complainant would become confused as to Complainant’s affiliation
with the resulting search engine website” in holding that the domain names were
registered and used in bad faith); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000)
(finding bad faith where Respondent linked the domain name to another website
in order to receive a portion of the advertising revenue from that website by
directing Internet traffic there.
The Panel thus
finds that Respondent registered and used the <mortgagewellsfargo.com>
and <wwwwellsfargofinancial.com> domain names in bad faith, and 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 <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 29, 2004
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