DECISION

Wells Fargo & Company v. Domain Asia Ventures a/k/a Domains Asia Ventures

Claim Number:  FA0405000273436

PARTIES

Complainant is Wells Fargo & Company (“Complainant”), represented by Adam Lindquist Scoville of Faegre & Benson, 1700 Lincoln St., Suite 3200, Denver, CO 80202.  Respondent is Domain Asia Ventures a/k/a Domains Asia Ventures  (“Respondent”), 255 Xiaoxue Rd Xiamen Fujian, 361001 P.R. China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com>, <yourwellsfargohomemortage.com>, registered with Moniker Online Services, Inc. and Iholdings.om, Inc. d/b/a 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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 15, 2004; the Forum received a hard copy of the Complaint on May 19, 2004.

On May 17, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum that the domain names <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com> and <wwwwellsfargomortgage.com>, are registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the names. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 25, 2004, Iholdings.com, Inc., d/b/a Dotregistrar.com confirmed by e-mail to the forum that the domain names <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.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 agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Polic (the “Policy”).

On May 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 15, 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@investwellsfargo.com, postmaster@onlinewellsfargo.com, postmaster@retirementplanwellsfargo.com, postmaster@wellsfargohomemorgage.com,  postmaster@wellsfargohomeloan.com, postmaster@wellsfargocardservices.com, postmaster@wellsfergo.com, postmaster@wwwyourwellsfargomortgage.com, postmaster@wwwwellsfargomortgage.com, postmaster@yourwellsfarmortagage.com, and postmaster@yourwellsfargohomemortage.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 23, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.

2. Respondent does not have any rights or legitimate interests in the <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names.

3. Respondent registered and used the <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names in bad faith.

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

FINDINGS

Complainant, Wells Fargo & Company, has been in the business of providing quality banking, financial and related goods and services to the public since 1852. 

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for the WELLS FARGO mark (Reg. No. 779,187, issued October 27, 1964, 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, Reg. No. 1,136,497, issued May 27, 1980, Reg. No. 1,138,966, issued August 26, 1980, Reg. No. 1,167,626, issued September 1, 1981, Reg. No. 1,181,279, issued December 8, 1981, Reg. No. 1,268,820, issued February 28, 1984, Reg. No. 1,273,144, issued April 10, 1990, Reg. No. 1,274,680, issued April 17, 1984, Reg. No. 2,555,996, issued April 2, 2002, Reg. No. 2,555,997, issued April 2, 2002, Reg. No. 2,561,807, issued April 16, 2002 and Reg. No. 2,597,836, issued July 23, 2002).

Complainant also holds valid registrations for its WELLS FARGO mark internationally in at least one hundred different countries including China, Respondent’s purported place of business.  Additionally, Complainant has owned a valid registration for the domain name <wellsfargo.com> since 1994, where it operates an Internet website to inform the public and Complainant’s present and potential customers of the broad array of services it offers. 

Respondent registered the disputed domain names on June 4, 2003 and October 16, 2003 and is using the domain names to redirect Internet users to a search engine website displaying pop-up advertisements.

 

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 names 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 names; and

(3) the domain names have been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the WELLS FARGO mark through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last one hundred and fifty-two 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 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).

The disputed <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names registered by Respondent are confusingly similar to Complainant’s WELLS FARGO mark because the domain names incorporate Complainant’s mark in its entirety and deviate only by the addition of generic and descriptive words that describe Complainant’s business.  The mere addition of a generic or descriptive term that describes Complainant’s business does not negate the confusingly similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  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 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 Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

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 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 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).

Moreover, where Complainant makes a 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 Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names to redirect Internet users to an unaffiliated search engine website with pop up advertisements.  Respondent’s use of domain names that are confusingly similar to Complainant’s WELLS FARGO mark to redirect Internet users interested in Complainant’s services to a commercial website unrelated to Complainant’s services 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 Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (finding that Respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain name); 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); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

Additionally, nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered the disputed domain names for commercial gain.  Respondent’s domain names divert Internet users wishing to search under Complainant’s well-known mark to Respondent’s search engine website through the use of domain names confusingly similar to Complainant’s mark.  Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince 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 pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Furthermore, Respondent’s registration of numerous domain names incorporating Complainant’s well-known registered mark in its entirety evidences a bad faith pattern pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <investwellsfargo.com>, <onlinewellsfargo.com>, <retirementplanwellsfargo.com>, <wellsfargohomemorgage.com>, <wellsfargohomeloan.com>, <wellsfargocardservices.com>, <wellsfergo.com>, <wwwyourwellsfargomortgage.com>, <wwwwellsfargomortgage.com>, <yourwellsfargomortagage.com> and <yourwellsfargohomemortage.com> domain names be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  July 5, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/950.html