Wells Fargo & Company v. Domain Asia
Ventures a/k/a Domains Asia Ventures
Claim
Number: FA0405000273436
Complainant is Wells Fargo & Company (“Complainant”),
represented by Adam Lindquist Scoville of Faegre & Benson,
1700 Lincoln St., Suite 3200, Denver, CO 80202. Respondent is Domain Asia
Ventures a/k/a Domains Asia Ventures (“Respondent”), 255 Xiaoxue Rd Xiamen Fujian,
361001 P.R. China.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <investwellsfargo.com>, <onlinewellsfargo.com>,
<retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>,
<wellsfargohomeloan.com>, <wellsfargocardservices.com>,
<wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>,
<yourwellsfargomortagage.com>, <yourwellsfargohomemortage.com>,
registered with Moniker Online Services, Inc. and Iholdings.om, Inc.
d/b/a 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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 15, 2004; the Forum received a hard copy of the Complaint
on May 19, 2004.
On
May 17, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum
that the domain names <investwellsfargo.com>, <onlinewellsfargo.com>,
<retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>,
<wellsfargohomeloan.com>, <wellsfargocardservices.com>,
<wellsfergo.com>, <wwwyourwellsfargomortgage.com> and
<wwwwellsfargomortgage.com>, are registered with Moniker Online
Services, Inc. and that Respondent is the current registrant of the names. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker
Online Services, Inc. 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 25, 2004, Iholdings.com, Inc., d/b/a Dotregistrar.com confirmed by e-mail
to the forum that the domain names <yourwellsfargomortagage.com>
and <yourwellsfargohomemortage.com> are registered with
Iholdings.com, Inc., d/b/a Dotregistrar.com and that Respondent is the current
registrant of the names. Iholdings.com,
Inc., d/b/a Dotregistrar.com has verified that Respondent is bound by the
Iholdings.com, Inc., d/b/a Dotregistrar.com agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Polic (the “Policy”).
On
May 26, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 15, 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@investwellsfargo.com,
postmaster@onlinewellsfargo.com, postmaster@retirementplanwellsfargo.com, postmaster@wellsfargohomemorgage.com, postmaster@wellsfargohomeloan.com,
postmaster@wellsfargocardservices.com, postmaster@wellsfergo.com,
postmaster@wwwyourwellsfargomortgage.com, postmaster@wwwwellsfargomortgage.com,
postmaster@yourwellsfarmortagage.com, and
postmaster@yourwellsfargohomemortage.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 23, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon 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 <investwellsfargo.com>,
<onlinewellsfargo.com>, <retirementplanwellsfargo.com>,
<wellsfargohomemorgage.com>, <wellsfargohomeloan.com>,
<wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>,
<wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com>
and <yourwellsfargohomemortage.com> domain names are
confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <investwellsfargo.com>, <onlinewellsfargo.com>,
<retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>,
<wellsfargohomeloan.com>, <wellsfargocardservices.com>,
<wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>,
<yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com>
domain names.
3. Respondent registered and used the <investwellsfargo.com>,
<onlinewellsfargo.com>, <retirementplanwellsfargo.com>,
<wellsfargohomemorgage.com>, <wellsfargohomeloan.com>,
<wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>,
<wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com>
and <yourwellsfargohomemortage.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, has been in the business of providing quality
banking, financial and related goods and services to the public since
1852.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the WELLS FARGO mark (Reg. No. 779,187, issued October 27,
1964, Reg. No. 838,059, issued October 31, 1967, Reg. No. 891,203, issued May
19, 1970, Reg. No. 1,131,103, issued February 19, 1980, Reg. No. 1,136,497,
issued May 27, 1980, Reg. No. 1,138,966, issued August 26, 1980, Reg. No.
1,167,626, issued September 1, 1981, Reg. No. 1,181,279, issued December 8,
1981, Reg. No. 1,268,820, issued February 28, 1984, Reg. No. 1,273,144, issued
April 10, 1990, Reg. No. 1,274,680, issued April 17, 1984, Reg. No. 2,555,996,
issued April 2, 2002, Reg. No. 2,555,997, issued April 2, 2002, Reg. No.
2,561,807, issued April 16, 2002 and Reg. No. 2,597,836, issued July 23, 2002).
Complainant also
holds valid registrations for its WELLS FARGO mark internationally in at least
one hundred different countries including China, Respondent’s purported place
of business. Additionally, Complainant
has owned a valid registration for the domain name <wellsfargo.com> since
1994, where it operates an Internet website to inform the public and
Complainant’s present and potential customers of the broad array of services it
offers.
Respondent
registered the disputed domain names on June 4, 2003 and October 16, 2003 and
is using the domain names to redirect Internet users to a search engine website
displaying pop-up advertisements.
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 names 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 names; and
(3) the domain names have been registered and
is being used in bad faith.
Complainant has
established that it has rights in the WELLS FARGO mark through registration
with the United States Patent and Trademark Office and through continued use of
its marks in commerce for the last one hundred and fifty-two years. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also 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).
The disputed <investwellsfargo.com>,
<onlinewellsfargo.com>, <retirementplanwellsfargo.com>,
<wellsfargohomemorgage.com>, <wellsfargohomeloan.com>,
<wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>,
<wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com>
domain names registered by Respondent are confusingly similar to Complainant’s
WELLS FARGO mark because the domain names incorporate Complainant’s mark in its
entirety and deviate only by the addition of generic and descriptive words that
describe Complainant’s business. The
mere addition of a generic or descriptive term that describes Complainant’s
business does not negate the confusingly similarity of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See
Oki Data Americas, 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 Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term); see also Westfield
Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD mark was the dominant element).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain names. Due to Respondent’s
failure to respond to the Complaint, the Panel will assume that Respondent
lacks rights and legitimate interests in the disputed domain names. In fact, once Complainant makes 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 Policy ¶
4(a)(ii). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist).
Moreover, where
Complainant makes a prima facie showing and Respondent does not respond, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true. See 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”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
Respondent is
using the <investwellsfargo.com>, <onlinewellsfargo.com>,
<retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>,
<wellsfargohomeloan.com>, <wellsfargocardservices.com>,
<wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>,
<yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com>
domain names to redirect Internet users to an unaffiliated search engine
website with pop up advertisements.
Respondent’s use of domain names that are confusingly similar to
Complainant’s WELLS FARGO mark to redirect Internet users interested in
Complainant’s services to a commercial website unrelated to Complainant’s
services is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of America Corp. v. Out Island Props., Inc., FA
154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of
infringing domain names to direct Internet traffic to a search engine website that
hosted pop-up advertisements was evidence that it lacked rights or legitimate
interests in the domain name); see also Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the
disputed domain name, a simple misspelling of Complainant’s mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name); see also U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services).
Additionally, nothing in the record, including the WHOIS domain name
registration information, suggests that Respondent is commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Complainant has fulfilled Policy ¶ 4(a)(ii).
Respondent
registered the disputed domain names for commercial gain. Respondent’s domain names divert Internet
users wishing to search under Complainant’s well-known mark to Respondent’s
search engine website through the use of domain names confusingly similar to
Complainant’s mark. Respondent’s
practice of diversion, motivated by commercial gain, through the use of
confusingly similar domain names evidences bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (stating that “[s]ince 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 pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness
Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
Furthermore,
Respondent’s registration of numerous domain names incorporating Complainant’s
well-known registered mark in its entirety evidences a bad faith pattern
pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of
several infringing domain names satisfies the burden imposed by the Policy ¶
4(b)(ii)); see also Armstrong
Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
(finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple
domain names that infringe upon others’ famous and registered trademarks); see
also YAHOO! Inc. v. Syrynx, Inc.,
D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy
¶ 4(b)(ii) in Respondent's registration of two domain names incorporating
Complainant's YAHOO! mark).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <investwellsfargo.com>, <onlinewellsfargo.com>,
<retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>,
<wellsfargohomeloan.com>, <wellsfargocardservices.com>,
<wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>,
<yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com>
domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 5, 2004