Wachovia Corporation v. Digi Real Estate
Foundation
Claim
Number: FA0502000416643
Complainant is Wachovia Corporation (“Complainant”), represented
by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street, Hearst Tower, 47th Floor, Charlotte, NC
28202. Respondent is Digi Real Estate Foundation (“Respondent”),
P.O. Box 7-5324, Panama City N7 8DJ, PA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wcahovia.com> and <wachoviia.com>,
registered with Bizcn.com, Inc. and <wwwwachoviabank.com>
and <wwwachovia.com>, registered with Enom, Inc.
The
undersigned certifies that he or 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 7, 2005.
On
February 7, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <wwwwachoviabank.com> and <wwwachovia.com>
are registered with Enom, Inc. and that Respondent is the current registrant of
the names. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. 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
February 16, 2005, Bizcn.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <wcahovia.com> and <wachoviia.com>
are registered with Bizcn.com, Inc. and that Respondent is the current
registrant of the names. Bizcn.com,
Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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
February 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 2005 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@wcahovia.com,
postmaster@wachoviia.com, postmaster@wwwwachoviabank.com and
postmaster@wwwachovia.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <wcahovia.com>,
<wachoviia.com>, <wwwwachoviabank.com> and <wwwachovia.com>
domain names are confusingly similar to Complainant’s WACHOVIA mark.
2. Respondent does not have any rights or
legitimate interests in the <wcahovia.com>, <wachoviia.com>,
<wwwwachoviabank.com> and <wwwachovia.com> domain
names.
3. Respondent registered and used the <wcahovia.com>,
<wachoviia.com>, <wwwwachoviabank.com> and <wwwachovia.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wachovia Corporation, is a holding company which owns numerous subsidiary
companies engaged in providing a wide variety of banking and financial services
throughout the world. Complainant and
is predecessor companies have used their WACHOVIA mark since 1879, when
Wachovia National Bank was first created.
In 2001, Complainant merged with First Union Corporation, making
Complainant the fourth largest financial institution in the United States.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
for its WACHOVIA mark (Reg. No. 883,529 issued December 30, 1969) and other
related WACHOVIA marks (including Reg. No 2,157,952 issued November 21, 1995;
Reg. No. 2,611,937 issued August 27, 2002; and Reg. No. 2,301,874 issued
December 21, 1999). In addition to its
registrations in the United States, Complainant also owns trademark
registrations and applications for its WACHOVIA mark and related marks in 24
other countries throughout the world.
Furthermore,
Complainant has expended millions of dollars promoting its banking and
financial services throughout the world under its WACHOVIA and related
marks. Complainant advertises its
services through a variety of traditional methods, including television, radio,
newspaper, magazines, direct mail, brochures, fliers and other printed
publications. In addition, Complainant
advertises its services through its website located at the <wachovia.com>
and <wachoviabank.com> domain names.
According to Complainant’s estimates, its advertising reaches more than
one million businesses and 15 million consumers a year.
Complainant also
has an extensive international presence, including representative offices throughout
Latin America and a global network that includes thirty-three representative
offices and more than three thousand correspondent banking relationships in
over 130 countries.
Respondent
registered the <wwwwachoviabank.com> domain name on June 24, 2004,
the <wwwachovia.com> domain name on July 20, 2004, and the <wachoviia.com>
and <wcahovia.com> domain names on August 7, 2004. All four of the disputed domain names
resolve to websites operated by Respondent that advertise and link to banking
and financial services that compete with Complainant. The links to these services point to a website at the
<oingo.com> domain name, which is operated by Google as part of the
“AdSense” program, which pays registrants of domain names who direct Internet
users to search pages operated by Google’s website at the <oingo.com>
domain name. Additionally, Complainant
has not licensed or authorized Respondent to use its WACHOVIA mark in any
way.
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 in this proceeding that it has presumptive rights in the WACHOVIA
mark, through registration with the United States Patent and Trademark Office
and numerous other trademark authorities throughout the world. 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 <wcahovia.com>
and <wachoviia.com> domain names registered by Respondent are
confusingly similar to Complainant’s WACHOVIA mark, because the domain names
are comprised simply of misspelled versions of Complainant’s mark. It is the Panel’s determination that the transposition
of the letters “a” and “c” in, or the addition of the letter “i” to,
Complainant’s mark is insufficient to negate a finding of confusing similiarity
pursuant to 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 Complainant’s
marks); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding
<googel.com> to be confusingly similar to Complainant’s GOOGLE mark and
noting that “[t]he transposition of two letters does not create a distinct mark
capable of overcoming a claim of confusing similarity, as the result reflects a
very probable typographical error”).
Furthermore,
Respondent’s <wwwwachoviabank.com> and <wwwachovia.com> domain
names are also confusingly similar to Complainant’s WACHOVIA mark, because the
disputed domain names either add only the letters “ww,” the letters “www,” or
the generic or descriptive term “bank” to Complainant’s mark. Adding a generic term to Complainant’s mark
or taking advantage of Internauts who make typographical errors when typing the
“www” prefix in an Internet address does not distinguish the confusingly
similar domain names from Complainant’s 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 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the allegations set forth by Complainant in the
Complaint. In this circumstance, the
Panel is entitled to accept all reasonable allegations and inferences in the
Complaint as true. See 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 the Complaint to be deemed
true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Complainant
alleges that Respondent does not have rights or legitimate interests in the
disputed domain names. Once Complainant
establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), the burden
shifts to Respondent to show that it does have rights or legitimate
interests. Thus, due to Respondent’s
failure to respond to the Complaint, the Panel assumes that Respondent lacks
rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard.”).
Respondent is
using the disputed domain names to redirect Internet users to websites operated
by Respondent that feature a generic search engine and advertise banking and
financial services of Complainant’s competitors. Links to these services divert Internauts to a website at the
<oingo.com> domain name, which is a program that pays registrants of
domain names for referring Internet users through links to search pages at the
<oingo.com> domain name. It is
the Panel’s determination that Respondent’s use of domain names confusingly
similar to Complainant’s WACHOVIA mark to divert Internet users to products and
services in competition with Complainant’s products and 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 names
pursuant to Policy ¶ 4(c)(iii). See
Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain names);
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 fee did not evidence rights or legitimate
interests in the domain name); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use).
Furthermore,
there is not proof in the record suggesting that Respondent is commonly known
by any of the four disputed domain names.
Additionally, Complainant asserts that Respondent is not licensed to use
Complainant’s WACHOVIA mark or any related marks and that Respondent is not
associated with Complainant in any way.
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s rights in the mark precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Thus, the Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is
using the disputed domain names in an attempt to profit by intentionally
attracting Internet users interested in locating Complainant’s WACHOVIA
products and services online who make common typing errors when entering
Complainant’s <wachovia.com> or <wachoviabank.com> domain
names. Respondent presumably derives
commercial benefit from these intentional diversions through click-through fees
from redirecting Internet users to other commercial websites, some of which
offer competing financial services and products. Thus, the Panel concludes that Respondent’s attempts to divert
Internet users for commercial gain by attracting Internet users to Respondent’s
website through a likelihood of confusion with Complainant’s WACHOVIA mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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 Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Complainant
provides a wide variety of banking and financial services throughout the world
under its WACHOVIA mark and other related marks. Respondent is using the disputed domain names to link to websites
that offer competing products.
Therefore, the Panel finds that Respondent’s use of domain names that
are confusingly similar to Complainant’s registered mark to advertise products
and services in direct competition with Complainant is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Gen. Media Communications, Inc.
v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith
where a competitor of Complainant registered and used a domain name confusingly
similar to Complainant’s PENTHOUSE mark to host a pornographic web site).
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 <wcahovia.com>, <wachoviia.com>, <wwwwachoviabank.com>
and <wwwachovia.com> domain names be TRANSFERRED from
Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 29, 2005
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