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Generic Top Level Domain Name (gTLD) Decisions |
Wachovia Corporation v. Henry Chan
Claim
Number: FA0405000276057
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 Henry Chan (“Respondent”), Post Office Box SS-6348/A124, Nassau, Bahamas.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wachiva.com>,
<wachoviabenefits.com>,
<wachoviachecking.com>, <wachoviacreditcards.com>,
<wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>,
<wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>,
<wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>,
<wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>,
<wicovia.com>, <wychovia.com>, <hronlinewachovia.com>
and <onlineserviceswachovia.com> registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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 (the "Forum")
electronically on May 25, 2004; the Forum
received a hard copy of the Complaint
on May 26, 2004.
On
May 26, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the Forum that the domain names <wachiva.com>, <wachoviabenefits.com>,
<wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>,
<wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>,
<wachovic.com>, <wachovica.com>, <wachovivia.com>,
<wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>,
<wacoviasec.com>, <whacovia.com>, <wicovia.com>,
<wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a 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
June 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 21, 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
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 28, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wachiva.com>, <wachoviabenefits.com>,
<wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>,
<wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>,
<wachovic.com>, <wachovica.com>, <wachovivia.com>,
<wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>,
<wacoviasec.com>, <whacovia.com>, <wicovia.com>,
<wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com>
domain names are confusingly similar to Complainant’s WACHOVIA mark.
2. Respondent does not have any rights or
legitimate interests in the <wachiva.com>, <wachoviabenefits.com>,
<wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>,
<wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>,
<wachovic.com>, <wachovica.com>, <wachovivia.com>,
<wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>,
<wacoviasec.com>, <whacovia.com>, <wicovia.com>,
<wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com>
domain names.
3. Respondent registered and used the <wachiva.com>,
<wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>,
<wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>,
<wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>,
<wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>,
<wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>,
<wicovia.com>, <wychovia.com>, <hronlinewachovia.com>
and <onlineserviceswachovia.com> domain names 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 numerous 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 in 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 et al. have 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 disputed domain names between October 24, 2003 and April 12,
2004. Respondent is using the domain
names to redirect Internet users to the same website that features pop-up
advertisements for a variety
of services and hosts a search engine to link
viewers to a variety of websites, predominantly including sites that involve
financial
services that directly compete 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 that it has rights in the WACHOVIA mark through registrations with
the United States Patent and Trademark
Office and through continued use of its
mark in commerce for the last 125 years.
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 Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding
that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate
‘exclusive rights,’
but only that Complainant has a bona fide basis for making
the Complaint in the first place); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent
operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction.).
Respondent’s
domain names are confusingly similar to Complainant’s WACHOVIA mark because the
domain names consist of either Complainant’s
mark with the mere addition of a
generic or descriptive term, or are misspellings of the WACHOVIA mark, or they
are a combination
of both of the preceding. The mere addition of a generic or descriptive term, the
misspelling of a well-known mark, or some combination fail to differentiate
sufficiently Respondent’s domain names from Complainant’s mark. See Oki Data Americas, 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 Vivid Video, Inc. v. Tennaro, FA 126646 (Nat.
Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from
Respondent’s addition of a generic word
to Complainant’s mark in a domain name
is less significant because Respondent and Complainant operate in the same
industry); see also Ty, Inc. v.
O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names
<beanybaby.com>, <beaniesbabies.com>, <beanybabies.com>
are
confusingly similar to Complainant’s mark BEANIE BABIES).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
has alleged that Respondent has no rights or legitimate interests in the
disputed domain names. Due to
Respondent’s failure to respond to the Complaint, the Panel will assume that
Respondent lacks rights and legitimate interests
in the disputed domain
names. In fact, once Complainant makes
a prima facie case in support of its allegations, the burden shifts to
Respondent to show that it does have such rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no 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 Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with
respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate
interests in the domain name); 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 Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent
is using the disputed domain names to redirect Internet users to a website that
features pop-up advertisements for an array
of services and hosts a search
engine to link viewers to a variety of websites, including sites that offer the
same type of goods
and services that Complainant offers online. Respondent’s use of the domain names, which
are confusingly similar to Complainant’s WACHOVIA mark, to redirect Internet
users interested
in Complainant’s products 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 names pursuant
to Policy ¶ 4(c)(iii). 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 Toronto-Dominion Bank v. Karpachev,
188 F.Supp.2d 110, 114 (D. Mass. 2002)
(finding that, because Respondent's sole purpose in selecting the domain names
was to cause confusion with 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 Respondent’s use of the disputed domain
name, a simple misspelling of 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 offered no evidence and nothing in the record suggests that
Respondent is commonly known by any of the domain
names. Thus, Respondent has not established rights
or legitimate interests in the disputed domain names 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 interest
in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the domain names that consist of either Complainant’s well-known
mark with the mere additions of a generic or
descriptive term, or are likely
misspellings of the WACHOVIA mark, or a combination of both of the preceding
and did so for Respondent’s
commercial gain.
Respondent’s domain names divert Internet users seeking Complainant’s
goods or services to Respondent’s commercial websites through
the use of domain
names that are 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
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 Nat’l Ass’n of Prof’l
Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding
that although a trademark involves words that could be generic in a different
context,
the reputation of that mark in the field where the mark is associated,
means that the intentional registration and use of a misspelling
of that mark
manifests the intent to capitalize on the mark, and constitutes bad faith); see
also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent
attracted users to a website sponsored by Respondent and created
confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
Respondent is
using the disputed domain names to advertise 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 domain
names 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
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
Respondent registered and used the domain name <eebay.com> in bad faith
where 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 Respondent registered and
used the domain name primarily for the purpose of
disrupting the business of
Complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical
to 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 <wachiva.com>, <wachoviabenefits.com>,
<wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>,
<wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>,
<wachovic.com>, <wachovica.com>, <wachovivia.com>,
<wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>,
<wacoviasec.com>, <whacovia.com>, <wicovia.com>,
<wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 12, 2004
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