DECISION

Wells Fargo & Company v. Albert Jackson

Claim Number:  FA0405000271697

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Adam Lindquist Scoville, of Faegre & Benson, LLP, 1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is Albert Jackson (“Respondent”), P.O. Box 2014, George Town, Grand Cayman, Cayman Islands.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com (hereinafter “Dotregistrar.com”).

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 13, 2004; the Forum received a hard copy of the Complaint on May 17, 2004.

On May 14, 2004, Dotregistrar.com confirmed by e-mail to the Forum that the domain names <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> are registered with Dotregistrar.com and that Respondent is the current registrant of the names. Dotregistrar.com has verified that Respondent is bound by the Dotregistrar.com 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 19, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 8, 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@mortgagewellsfargo.com and postmaster@wwwwellsfargofinancial.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 Forum transmitted to the parties a Notification of Respondent Default.

On June 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.

2. Respondent does not have any rights or legitimate interests in the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names.

3. Respondent registered and used the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Wells Fargo & Company, has provided banking and financial-related goods and services since 1852 under the WELLS FARGO mark. Complainant has obtained registrations for the WELLS FARGO mark worldwide, from the United States (e.g. U.S. Reg. Nos. 779,187 and 838,059) to the Caymen Islands, Respondent’s place of domicile (Reg. Nos. 1,273,344, 932,911 and 987,406). In addition to using the WELLS FARGO mark worldwide in connection with banking and financial goods and services, Complainant operates several websites incorporating the mark, and owns both the <wellsfargo.com> and <wellsfargofinancial.com> domain names (used by Complainant since 1994 and 2000, respectively). Complainant also holds numerous registrations for marks that contain the WELLS FARGO mark in addition to another word or phrase, such as the WELLS FARGO DIRECT mark (U.S. Reg. No. 2,575,576), the WELLS FARGO FUNDS mark (U.S. Reg. No. 2,458,340) and the WELLS FARGO ADVANTAGE mark (U.S. Reg. No. 2,640,763).

Respondent, Albert Jackson, registered the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names on August 6, 2003, long after Complainant had established rights in the WELLS FARGO mark and had registered the <wellsfargo.com> and <wellsfargofinancial.com> domain names. Respondent has posted no content at the disputed domain names, but instead uses the domain names to redirect Internet users to the <landing.domainsponsor.com> domain name, where various pop-up advertisements are then displayed. Upon attempting to leave the website hosted at the <landing.domainsponsor.com> domain name, a further full-screen pop-up advertisement is generated. Domainsponsor.com, host of the website that Respondent directs its domain names to, operates a program which pays referral fees of up to 50% of the revenue generated from redirected Internet users to those domain names that direct Internet users to the Domainsponsor.com website.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant has established rights in the WELLS FARGO mark through registration of the mark with the appropriate governmental organizations worldwide, as well as through widespread use of the mark in commerce for over a century. See 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 <mortgagewellsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark. With this domain name, Respondent has merely added the word “mortgage” to Complainant’s famous WELLS FARGO mark. As Complainant holds many trademark registrations that consist of the WELLS FARGO mark and another word, and as Respondent chose to use a word that is relevant to the type of business Complainant carries out under the WELLS FARGO mark, this domain name is confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Respondent’s <wwwwellsfargofinancial.com> domain name is also confusingly similar to Complainant’s WELLS FARGO mark. This domain name is a classic example of typosquatting, the deliberate use of another’s trademark (with minor misspellings that mimic typographical errors) in order to mislead Internet users. Here, Respondent is attempting to attract Internet users who fail to include the period between the “www” and the words “Wells Fargo Financial” when attempting to reach Complainant’s website at the <wellsfargofinancial.com> domain name. As Complainant actually uses the word “financial” in connection with its WELLS FARGO mark at its <wellsfargofinancial.com> domain name, the disputed domain name is confusingly similar to Complainant’s registered WELLS FARGO 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 Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).

Accordingly, the Panel finds that the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel infers that Respondent is using both of the disputed domain names to generate revenue from referral fees through its association with Domainsponsor.com. Respondent’s use of the typosquatted <wwwwellsfargofinancial.com> domain name for this purpose is illegitimate per se, and stands as unrebutted evidence that Respondent lacks rights and legitimate interests in this domain name.  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacked rights or legitimate interests in the disputed domain name vis á vis Complainant); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that Respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using Complainant’s mark to earn profit from pop-up advertisements).

Likewise, Respondent’s use of the <mortgagewellsfargo.com> domain name does not evidence any rights or legitimate interests in the domain name. Respondent is using a confusingly similar variant of Complainant’s WELLS FARGO mark in order to cash in on referral fees, without authorization to use the mark by Complainant. Given the famous nature and long standing use of the WELLS FARGO mark by Complainant, Respondent’s appropriation of Complainant’s mark for this purpose does not equate to any of the criteria established by Policy ¶¶ 4(c)(i)-(iii) that establish rights or legitimate interests in a domain name.  See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of 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 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 fees, did not evidence rights or legitimate interests in the domain name); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

With the <wwwwellsfargofinancial.com> domain name, Respondent chose to register a domain name that is all but identical to Complainant’s <wellsfargofinancial.com> domain name. By acting as a typosquatter, and by using this domain name to gain referral fees, Respondent registered and used this domain name in bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (“The absence of a dot between the “www” and “canadiantire.com” [in the <wwwcanadiantire.com> domain name is] likely to confuse Internet users, encourage them to access Respondent’s site” and evidenced bad faith registration and use of the domain name.); see also 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.”).

The <mortgagewellsfargo.com> domain name was also registered and used in bad faith. Respondent had no right to use the WELLS FARGO mark in a domain name, but nevertheless chose to attempt to capitalize on the goodwill that Complainant has built up around this mark in order take advantage of Domainsponsor.com’s referral program. Respondent’s registration evidences Respondent’s knowledge of the strength of Complainant’s WELLS FARGO mark, and Respondent’s subsequent use of the domain name dilutes that same mark. These circumstances are evidence that this domain name was also registered and used in bad faith. See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (“Since the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website in order to receive a portion of the advertising revenue from that website by directing Internet traffic there.

The Panel thus finds that Respondent registered and used the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <mortgagewellsfargo.com> and <wwwwellsfargofinancial.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 29, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/679.html