Wachovia Corporation v. Domain Active
Pty. Ltd.
Claim
Number: FA0502000417628
Complainant is Wachovia Corporation (“Complainant”), represented
by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street, Hearst Tower, 47th Floor, Charlote, NC
28202. Respondent is Domain Active Pty.
Ltd. (“Respondent”), GPO Box 262, Clayfield, QLD 4011 AU.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wachivia.com>, <wycovia.com>, and <firstuniononlinebanking.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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 9, 2005.
On
February 10, 2005, Fabulous.com Pty. Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain names <wachivia.com>, <wycovia.com>, and
<firstuniononlinebanking.com> are registered with Fabulous.com
Pty. Ltd. and that Respondent is the current registrant of the names. 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-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
February 11, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 3, 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@wachivia.com,
postmaster@wycovia.com, and postmaster@firstuniononlinebanking.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 10, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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 <wachivia.com> and <wycovia.com> domain
names are confusingly similar to Complainant’s WACHOVIA mark. Resopndent’s
<firstuniononlinebanking.com> domain name is confusingly
similar to Complainant’s FIRST UNION mark.
2. Respondent does not have any rights or
legitimate interests in the <wachivia.com>, <wycovia.com>, and <firstuniononlinebanking.com>
domain names.
3. Respondent registered and used the <wachivia.com>, <wycovia.com>, and
<firstuniononlinebanking.com> domain names in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant is a
holding company that owns numerous subsidiary companies engaged in providing a
wide variety of banking and financial services throughout the world under the
WACHOVIA and FIRST UNION marks. Complainant is the fourth largest financial
institution in the United States. Complainant and its predecessors have used
the WACHOVIA and FIRST UNION marks in connection with their services since 1879
and 1958, respectively. Complainant holds numerous worldwide trademark
registrations for the WACHOVIA and FIRST UNION marks, including U.S. Reg. Nos.
883,529 for WACHOVIA and 1,338,333 for FIRST UNION (issued December 30, 1969
and May 28, 1985, respectively), which are on the Principal Register of the
United States Patent and Trademark Office. Complainant conducts its business
operations throughout the world and operates a representative office in
Australia.
Respondent registered
the <wachivia.com>, <wycovia.com>,
and <firstuniononlinebanking.com> domain names on August
25, 2002, January 7, 2004, and August 8, 2002, respectively. The <wachivia.com>
and <firstuniononlinebanking.com> domain names resolve to a web
portal operated by <roar.com> that advertises and contains links to
websites offering services provided by Complainant’s competitors. Respondent
receives compensation from the operator of <roar.com> for each link
clicked by an Internet user. The <wycovia.com> domain name
resolves to a website that advertises and provides links to various products
and services, including financial services offered by Complainant’s
competitors. Respondent is not licensed to use any of Complainant’s marks.
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 that it has rights in the WACHOVIA and FIRST UNION marks through
registration with the United States Patent and Trademark Office and through
continuous use of the marks in commerce since 1879 and 1958, respectively. 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, and stating that a respondent has the burden of
refuting this assumption).
Complainant
asserts that the <wachivia.com> and <wycovia.com> domain names are confusingly similar to
Complainant’s WACHOVIA mark. The <wachivia.com> domain name simply
replaces the letter “o” in the mark with the letter “i,” which is adjacent to
“o” on a standard computer keyboard, and adds the “.com” generic top-level
domain (“gTLD”). The <wycovia.com> domain name is a phonetically
equivalent spelling of Complainant’s well-known mark that adds the “.com” gTLD.
The intentional misspelling of a famous mark and the addition of a gTLD do not
distinguish the domain names from the mark. The Panel finds that Respondent has
engaged in the practice of “typosquatting,” which creates domain names that are
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, the respondent did not create a distinct mark, and the intentional
misspelling rendered the domain name confusingly similar to the complainant’s
marks); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> was confusingly
similar to the complainant’s STATE FARM mark); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum
July 23, 2002) (finding the disputed domain name was a simple misspelling of
the complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered
famous mark”).
Complainant
argues that the <firstuniononlinebanking.com> domain name is
confusingly similar to Complainant’s FIRST UNION mark because the domain name fully
incorporates the mark while merely adding the generic words “online banking”
and the “.com” gTLD and removing a space from the mark. The removal of a space
and the addition of generic words and a gTLD do not distinguish the domain name
from the mark. The Panel finds that the <firstuniononlinebanking.com>
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See 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”); see
also Yahoo! Inc. v. Zuccarini,
D2000-0777 (WIPO Oct. 2, 2000) (finding that the registration and use of
multiple domain names incorporating famous marks combined with generic words to
be confusingly similar to the complainant’s marks and likely to confuse
Internet users about the sponsorship or affiliation of the websites); see
also Am. Online Inc. v. Neticq.com
Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the
generic word “net” to the complainant’s ICQ mark makes the <neticq.com>
domain name confusingly similar to the mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the disputed domain
names. Complainant’s submission has gone unopposed and its arguments unrefuted.
Further, because Respondent has failed to submit a response, Respondent has failed
to propose any set of circumstances that could substantiate its rights or
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of a complaint to be deemed true).
Respondent
is not using the disputed domain names in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).
Respondent’s domain names redirect unsuspecting Internet users to pay-per-click
search engines that link to commercial websites that offer products and
services that compete with Complainant. Respondent makes opportunistic use of
Complainant’s marks in order to capitalize on the goodwill and fame associated
with the WACHOVIA and FIRST UNION monikers. Thus, Respondent fails to establish
rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001)
(finding no rights or legitimate interests where the respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
complainant’s site to a competing website); see also Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a pay-per-click
search engine, in competition with the complainant, was not a bona fide
offering of goods or services); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the
respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
No
evidence before the Panel suggests Respondent is commonly known by the disputed
domain names under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates
that the registrant of the disputed domain names is known as “Domain Archive”
and is not known by any of the confusingly similar second-level domains that
infringe on Complainant’s WACHOVIA and FIRST UNION marks. Moreover, Respondent
is not licensed to use Complainant’s marks for any purpose. See Tercent Inc.
v. Lee 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 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 Gallup
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that the respondent does not have rights in a domain name when the respondent
is not known by the mark).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
makes use of confusingly similar variations of Complainant’s famous WACHOVIA
and FIRST UNION marks to ensnare unsuspecting Internet users. Respondent then
redirects the users to websites that provide links to various commercial
websites. Respondent receives pay-per-click fees when Internet users follow the
links on its websites. Respondent is profiting from the unauthorized use of
Complainant’s registered marks in its domain names. Such infringement is what
the Policy was intended to remedy and is bad faith registration and use under
Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see also Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if a respondent profits from its
diversionary use of a complainant’s mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)).
Respondent
registered and used domain names that are confusingly similar to Complainant’s
marks for the purpose of directing Internet users to businesses that offer
services that compete with Complainant. Respondent’s use of the disputed domain names establishes that
Respondent registered and used the domain names for the purpose of disrupting
the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the complainant’s marks
suggests that the respondent, a competitor of the complainant, registered the
names primarily for the purpose of disrupting the complainant’s business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business
from the complainant to a competitor’s website in violation of Policy ¶
4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the <wachivia.com> and <wycovia.com> domain
names, which include intentional misspellings of Complainant’s well-known
marks, is evidence of bad faith registration and use of the domain names.
Respondent diverts Internet users who accidentally mistype Complainant’s
WACHOVIA mark to Respondent’s competing websites. The Panel finds that
Respondent engaged in the practice of typosquatting and, therefore, finds that
Respondent registered and used the <wachivia.com> and <wycovia.com>
domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See 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.”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding
that the respondent registered and used the
<zonelarm.com> domain name in bad faith pursuant to Policy
¶ 4(a)(iii) because the name was merely a typosquatted version of the
complainant’s ZONEALARM mark); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of the
complainant’s DERMALOGICA mark and stating that “[t]yposquatting
itself is evidence of bad faith registration and use pursuant to Policy
4(a)(iii)”).
Respondent’s
registration of the disputed domain names, which are confusingly similar to
Complainant’s well-known registered marks, suggests that Respondent knew of
Complainant’s rights in the WACHOVIA and FIRST UNION marks. Additionally,
Complainant’s trademark registrations on the Principal Register of the United
States Patent and Trademark Office gave Respondent constructive notice of
Complainant’s marks. Moreover, the facts that Respondent’s websites provide
links to Complainant’s competitors and that Complainant does business in
Respondent’s country of residence evidence Respondent’s knowledge of
Complainant’s rights in the marks. Thus, the Panel finds that Respondent chose
the disputed domain names based on the distinctive and well-known qualities of
Complainant’s marks, which evidences bad faith registration and use under
Policy ¶ 4(a)(iii). See Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that the respondent demonstrated bad
faith where the respondent was aware of the complainant’s famous mark when
registering the domain name and aware of the deception and confusion that would
inevitably follow if it used the domain name); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
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 <wachivia.com>, <wycovia.com>, and <firstuniononlinebanking.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
March 24, 2005
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