Wachovia Corporation v. Asia Ventures,
Inc.
Claim
Number: FA0505000473245
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 Asia Ventures, Inc. (“Respondent”), GPO
11136, Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wachoviaonlinebanking.com>, registered
with The Registry At Info Avenue d/b/a IA Registry.
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 May
9, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 10, 2005.
On
May 13, 2005, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail
to the National Arbitration Forum that the domain name <wachoviaonlinebanking.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry has verified that
Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry 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 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 2, 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@wachoviaonlinebanking.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
June 13, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wachoviaonlinebanking.com>
domain name is confusingly similar to Complainant’s WACHOVIA mark.
2. Respondent does not have any rights or
legitimate interests in the <wachoviaonlinebanking.com> domain
name.
3. Respondent registered and used the <wachoviaonlinebanking.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wachovia Corporation, is a holding company that owns numerous subsidiary
companies engaged, individually and collectively, in providing a wide variety
of banking and financial services throughout the world.
Complainant
holds several registrations for the WACHOVIA mark with the United States Patent
and Trademark Office (Reg. No. 883,529 issued December 30, 1969; Reg. No.
1,735,242 issued November 24, 1992; Reg. No. 1,729,833 issued November 3, 1992;
Reg. No. 2,738,730 issued July 15, 2003; Reg. No. 2,805,546 issued January 13,
2004 and Reg. No. 2,744,626 issued July 29, 2003) in connection with banking
and related financial services. In
addition, Complainant owns at least twenty-five other federal trademark
registrations for its WACHOVIA family of marks. Complainant’s WACHOVIA mark is also registered throughout the
world (i.e., Japan, Germany, Switzerland, Canada, the United Kingdom and the
Cayman Islands).
Complainant
and its predecessor companies have been using the WACHOVIA mark since Wachovia
National Bank was created in 1879.
Since that time, Complainant has expanded its use of the mark to include
a wide variety of financial services.
Complainant is a major participant in the international banking
community, including branches in Hong Kong, Tokyo, Taipei, Seoul and
London. Additionally, Complainant’s
extensive global network includes thirty-three representative offices and over
3,000 correspondent banking relationships in more than 130 countries.
Complainant’s
main website is operated at <wachovia.com>.
Respondent
registered the <wachoviaonlinebanking.com> domain name on March
26, 2002. Respondent is using the
domain name to redirect Internet users to a website featuring pop-up
advertisements for a variety of services and a search engine linking viewers to
a variety of websites, including sites that involve financial services in
direct competition with Complainant’s services.
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 WACHOVIA mark through registration with the United
States Patent and Trademark Office and through continuous use of the mark in
commerce. 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <wachoviaonlinebanking.com> domain name is confusingly similar to Complainant’s
WACHOVIA mark because Respondent’s domain name incorporates Complainant’s mark
in its entirety and adds the generic or descriptive phrase “online banking” to
the mark, which describes an aspect of Complainant’s business. This addition to Complainant’s mark does not
negate the confusingly similar aspects of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See 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 the
complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
was confusingly similar to the complainant’s HOYLE mark, and that the addition
of “casino,” a generic word describing the type of business in which the
complainant was engaged, did not take the disputed domain name out of the realm
of confusing similarity).
Additionally,
Respondent’s <wachoviaonlinebanking.com> domain name is
confusingly similar to Complainant’s WACHOVIA mark because the domain name
incorporates Complainant’s mark in its entirety and adds the generic top-level
domain “.com.” The addition of a
generic top-level domain name to Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> was identical to the complainant's
registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> was plainly identical to the
complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <wachoviaonlinebanking.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have such rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). Due to Respondent’s
failure to respond to the Complaint, the Panel will infer that Respondent does
not have rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where the complainant has asserted that respondent does not have
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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist).
Moreover, where
Complainant makes the 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 the respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the complainant
to be deemed true).
Respondent
is using the <wachoviaonlinebanking.com> domain name to redirect
Internet users to a website featuring pop-up advertisements for a variety of
services and a search engine linking viewers to a variety of websites,
including sites that involve financial services in direct competition with
Complainant’s services. Respondent’s
use of a domain name, which is confusingly similar to Complainant’s WACHOVIA
mark, to redirect Internet users interested in Complainant’s products and
services to a commercial website that links to financial-related websites and
pop-up advertisements 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 Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of confusingly similar derivatives of
the 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 Toronto-Dominion Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (finding that,
because the respondent's sole purpose in selecting the domain names was to
cause confusion with the 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); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb.
Forum Apr. 5, 2003) (holding that the respondent’s use of the disputed domain
name, a simple misspelling of the 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).
Moreover,
Respondent has offered no evidence and, nothing in the record suggests, that
Respondent is commonly known by the <wachoviaonlinebanking.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name 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 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 Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6,
2000) (finding no rights or legitimate interests in the misspelled domain name
<amaricanairlines.com> because
the respondent was not authorized to use the complainant's mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <wachoviaonlinebanking.com> domain name consisting
of Complainant’s well-known mark with the addition of a generic or descriptive
term, and did so for Respondent’s commercial gain. Respondent’s domain name redirects Internet users seeking
Complainant’s goods or services to Respondent’s commercial website through the
use of a domain name that is confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
WACHOVIA mark. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the 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)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain); see
also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the
respondent attracted users to a website sponsored by the respondent and created
confusion with the complainant’s mark as to the source, sponsorship, or
affiliation of that website).
Respondent is
using the disputed domain name to redirect Internet users to a website featuring
a search engine and links to financial-related websites. Complainant’s business provides banking and
financial services to individuals and businesses throughout the world. The Panel finds that, by creating confusion
around Complainant’s WACHOVIA mark, Respondent is attempting to disrupt the
business of a competitor. Respondent’s
use of a domain name confusingly similar to Complainant’s mark to sell services
similar to Complainant’s goods and services 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites); see also Hewlett
Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding
that the respondent registered and used the domain name primarily for the
purpose of disrupting the business of the complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to the complainant’s services under the OPENMAIL mark).
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 <wachoviaonlinebanking.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
June 27, 2005
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