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Generic Top Level Domain Name (gTLD) Decisions |
Wells Fargo & Company v. Michele
Dinoia and SZK.com
Claim
Number: FA0411000366278
Complainant is Wells Fargo & Company (“Complainant”),
represented by Patricia Sprain, of Faegre & Benson, LLP,
2200 Wells Fargo Center, 90 South 7th Street, Minneapolis, MN 55402. Respondent is Michele Dinoia and SZK.com (“Respondent”), represented by
Valerio Donnini,
4 Via Venezia, Pescara
65121, ITALY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ellsfargo.com>, registered with Onlinenic,
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
18, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 19, 2004.
On
November 22, 2004, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ellsfargo.com> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent
is bound by the Onlinenic,
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 23, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 13, 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@ellsfargo.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
December 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed he
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ellsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <ellsfargo.com> domain name.
3. Respondent registered and used the <ellsfargo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wells Fargo & Company, provides quality banking, financial and related
goods and services. Complainant owns
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the WELLS FARGO
mark (Reg. No. 779,187 issued October 27,
1964 for banking and trust services, Reg. No. 1,167,626 issued September 1,
1981 for real
estate brokerage and Reg. No. 1,273,144 issued April 3, 1984 for
armored trucks and structural parts).
Complainant also holds trademark registrations for the WELLS FARGO mark
from Algeria to Zimbabwe, including the Respondent’s purported
country of
residence, Italy (Reg. No. 830,013).
Complainant has
used the WELLS FARGO mark in commerce since 1852. Complainant ranks as the world's fourth largest financial
institution in the market value of Complainant’s stock and the twenty-seventh
largest among all the
world's companies.
Complainant employs 134,000 team members in the United States alone.
Complainant registered and uses the <wellsfargo.com>
and <wellsfargofinancial.com> domain names to inform the public and
Complainant’s customers of the broad array of services that Complainant
offers. Many of these services are
offered to Complainant’s customers directly over its websites.
Respondent registered the <ellsfargo.com>
domain name on January 18, 2002.
Respondent has configured the domain name to redirect Internet users to
a website that offers multiple pop-up advertisements and links
to
financial-related websites that predominantly compete with Complainant’s
products and 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 that it has rights in the WELLS FARGO mark through registration
with the USPTO and various international
trademark authorities as well as
through continuous use of its 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 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).
Respondent’s <ellsfargo.com>
domain name is confusingly similar to Complainant’s WELLS FARGO mark
because the domain name merely deletes the letter “w” from the
term “wells” and
adds the generic top-level domain “.com.”
The mere misspelling of Complainant’s mark and the addition of the
generic top-level domain “.com” is insufficient to distinguish
the domain name
from the 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 Complainant);
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> is confusingly similar to Complainant’s
STATE FARM mark); see also Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain
(gTLD) “.com” after the name POMELLATO is not relevant); see
also 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).
Furthermore, the
omission of the space between the words in Complainant’s WELLS FARGO mark is
insufficient to distinguish the domain
name from the mark. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (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 Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO
Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is
identical to the WEMBLEY STADIUM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name 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 prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the
domain name in question).
Additionally, a
registrant that uses a domain name, which is identical or confusingly similar
to a third-party mark, to market goods
or services that directly compete with
those offered by the third party under its mark has been found to be neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s domain name resolves to a website advertising and
linking to financial service providers in competition with Complainant. Thus, Respondent’s use of a domain name
confusingly similar to Complainant’s mark 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation
of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan.
11, 2002) (finding that Respondent’s use of the disputed domain name to
redirect Internet users
to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services).
Moreover, the
fact that Respondent’s domain name is merely a typosquatted variation of
Complainant’s mark tends to prove that Respondent
lacks any rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb.
Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com> and
<ltdcommodaties.com> disputed domain names were typosquatted
versions
of Complainant's LTD COMMODITIES mark and "Respondent's
'typosquatting' is evidence that Respondent lacks rights or legitimate
interests in the disputed domain names"); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (Nat.
Arb. Forum Sept. 19, 2003) (finding that Respondent lacked rights and
legitimate interests in the disputed domain
names because it "engaged
in the practice of typosquatting by taking advantage of Internet users who
attempt to access Complainant's <indymac.com>
website but mistakenly
misspell Complainant's mark by typing the letter 'x' instead of the letter
'c'.").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name
confusingly similar to Complainant’s
mark and using it to market competing financial service providers. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from Complainant's marks suggests that
Respondent, Complainant’s competitor, registered
the names primarily for the
purpose of disrupting Complainant's business); see also 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).
Furthermore,
Respondent is capitalizing on the goodwill of the WELLS FARGO mark by using the
disputed domain name to divert Internet
users to a website featuring competing
financial services. Since the disputed
domain name contains Complainant’s mark, a consumer searching for Complainant
would become confused as to Complainant’s
affiliation with the resulting
website. Therefore, Respondent’s
opportunistic use of the disputed domain name represents bad faith registration
and use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that
if Respondent profits from its diversionary use of Complainant's mark when
the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that 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 Respondent directed Internet users
seeking Complainant’s site
to its own website for commercial gain).
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 <ellsfargo.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 30, 2004
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