Wells Fargo & Company v. Digi Real Estate Foundation
Claim Number: FA0611000832810
Complainant is Wells Fargo & Company (“Complainant”), represented by Deborah Shinbein, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80203-4532. 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 <wellsfargorewads.com>, <wwwwwellsfargo.com>,
<wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>
and <wellsfagomortgage.com> registered with Bizcn.com, Inc., <wellsfarrgo.com>, <wellsfaargobank.com>,
<wellsfargomortage.com> and <wellsfargomorgage.com> registered
with Enom, Inc., and <wellsfargomotgage.com> registered
with Domainscout.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 6, 2006.
On November
6, 2006, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the <wellsfargorewads.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>,
<wellsfargomrtgage.com>, <wellsfargomortgae.com> and <wellsfagomortgage.com>
domain names 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 November
6, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the <wellsfarrgo.com>, <wellsfaargobank.com>,
<wellsfargomortage.com> and <wellsfargomorgage.com> domain names 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").
November 7, 2006, Domainscout.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wellsfargomotgage.com> domain name is registered with Domainscout.com, Inc. and that Respondent is the current registrant of the name. Domainscout.com, Inc. has verified that Respondent is bound by the Domainscout.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 November 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 30, 2006 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@wellsfargorewads.com, postmaster@wellsfarrgo.com, postmaster@wwwwwellsfargo.com, postmaster@wellsfargmortgage.com, postmaster@wellsfargomrtgage.com, postmaster@wellsfargomortgae.com, postmaster@wellsfagomortgage.com, postmaster@wellsfaargobank.com, postmaster@wellsfargomortage.com, postmaster@wellsfargomorgage.com and postmaster@wellsfargomotgage.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>, <wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>, <wellsfargomorgage.com> and <wellsfargomotgage.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or legitimate interests in the <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>, <wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>, <wellsfargomorgage.com> and <wellsfargomotgage.com> domain names.
3. Respondent registered and used the <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>, <wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>, <wellsfargomorgage.com> and <wellsfargomotgage.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wells Fargo & Company, is a well-known financial services company. Complainant holds numerous registrations with the Untied States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark (e.g. 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). Complainant utilizes the WELLS FARGO mark in connection with all aspects of its business. Complainant also holds the registration for the <wellsfargo.com> domain name used to provide Internet users with information and access to Complainant’s financial goods and services.
Respondent registered the <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>, <wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>, <wellsfargomorgage.com> and <wellsfargomotgage.com> domain names at various times between August 2004 and November 2005. Respondent is usign the disputed domain names to host parked websites featuring generic links to third-party websites for everything from “Travel” to “Finance” to “Entertainment.”
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See 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 complaint to be deemed true); see also 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.”).
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 registrations of the mark with the USPTO. The Panel finds that such registrations are sufficient to establish the rights required under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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 [or] have acquired secondary meaning.”).
Respondent’s <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>,
<wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>,
<wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>,
<wellsfargomorgage.com> and <wellsfargomotgage.com> domain
names are confusingly similar to Complainant’s WELLS FARGO
mark. Respondent’s domain names
demonstrate the practice of typosquatting, which occurs when variations of a
mark are registered that include common typographical errors or misspellings of
that mark, for example the inclusion of “www” in the domain name or
misspellings such as “wellsfarrgo,” “wellsfarg” and “wellsfaargo.” Typosquatting seeks to take advantage of
Internet users spelling and typing errors in order to redirect traffic to the
website of the typosquatter. The
intentional inclusion of spelling or typing errors does not distinguish the
disputed domain names from Complainant’s mark, nor does the introduction of
terms that describe Complainant’s business, such as “mortgage,” “rewards” and
“bank.” The Panel finds that
Respondent’s disputed domain names are confusingly similar to Complainant’s
WELLS FARGO mark pursuant to Policy ¶ 4(a)(i).
See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259
(WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or
changes, such as the addition of a fourth “w” or the omission of periods or
other such “generic” typos do not change respondent’s infringement on a core
trademark held by the complainant); see also Neiman
Marcus Group, Inc. v. Party Night, Inc.,
FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name, thus creating a prima facie case and shifting the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel may take into account Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Respondent is using the disputed domain names to redirect Internet users to Respondent’s websites featuring generic links to third-party websites. Presumably, Respondent receives pay-per-click fees from these linked websites. The Panel finds that such use is neither a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Further, there is no available evidence demonstrating that Respondent is commonly known by the disputed domain names. Respondent’s WHOIS information identifies Respondent as “Digi Real Estate Foundation,” which has no apparent similarity to the disputed domain names. Additionally, Complainant asserts that Respondent is in no way sponsored by or affiliated with Complainant, and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain name, and thus lacks rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain names are confusingly similar to Complainant’s WELLS FARGO
mark. Internet users seeking
Complainant’s genuine website at <wellsfargo.com> could easily find themselves
redirected to Respondent’s websites through a simple misspelling or typo of
Complainant’s WELLS FARGO mark, or by combining generic terms with
Complainant’s mark. Because of the
confusing similarity between the disputed domain names and Complainant’s mark
Internet users arriving at Respondent’s websites may mistakenly believe that
Respondent’s websites are sponsored by or affiliated with Complainant. However, instead of finding Complainant’s
genuine services, Internet users are instead confronted with the numerous
third-party links, from which Respondent presumably receives referral fees. The
Panel find’s that Respondent’s use of a confusingly similar domain names to
attract Internet users to its website, presumably for financial gain, is
evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel is not limited to the specific circumstances outlined in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use under Policy ¶ 4(a)(iii). As the panel in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), stated, “the Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” One such circumstance that has been found to evidence bad faith registration and use is the practice of typosquatting. The Panel finds that Respondent’s registration of domain names including intentional alterations to Complainant’s mark that mimic common spelling and typing errors is evidence of tyrposquatting and demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] 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 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 <wellsfargorewads.com>, <wellsfarrgo.com>, <wwwwwellsfargo.com>, <wellsfargmortgage.com>, <wellsfargomrtgage.com>, <wellsfargomortgae.com>, <wellsfagomortgage.com>, <wellsfaargobank.com>, <wellsfargomortage.com>, <wellsfargomorgage.com> and <wellsfargomotgage.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 15, 2006
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