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Generic Top Level Domain Name (gTLD) Decisions |
Wells Fargo & Company v. Chen Huang
Claim
Number: FA0407000293728
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 Chen Huang
(“Respondent”), PO Box 20231, Zengdu, Guangzhou 34264, China.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wellsfargocreditcard.com>, <wellsfargofinancials.com>,
<wellsfargomortagage.com>, <yourswellsfargomortage.com> and
<yourwellsfargohomemorgage.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 7, 2004; the Forum
received a hard copy of the Complaint
on July 12, 2004.
On
July 8, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the Forum that the domain names <wellsfargocreditcard.com>, <wellsfargofinancials.com>,
<wellsfargomortagage.com>, <yourswellsfargomortage.com>
and <yourwellsfargohomemorgage.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
July 13, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
August 2, 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
August 4, 2004 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon.
Ralph Yachnin 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 <wellsfargocreditcard.com>,
<wellsfargofinancials.com>, <wellsfargomortagage.com>,
<yourswellsfargomortage.com> and <yourwellsfargohomemorgage.com>
domain names are confusingly similar to Complainant’s WELLS FARGO mark.
2. Respondent does not have any rights or
legitimate interests in the <wellsfargocreditcard.com>, <wellsfargofinancials.com>,
<wellsfargomortagage.com>, <yourswellsfargomortage.com>
and <yourwellsfargohomemorgage.com> domain names.
3. Respondent registered and used the <wellsfargocreditcard.com>,
<wellsfargofinancials.com>, <wellsfargomortagage.com>,
<yourswellsfargomortage.com> and <yourwellsfargohomemorgage.com>
domain names 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 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, China (Reg. No. 157592 issued May 15, 1982).
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 disputed domain names between November 17, 2003 and February 20,
2004. Respondent has configured the
domain names to redirect Internet users to a website that offers a search
engine, 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 rights in the WELLS FARGO mark through registration with the United
States Patent and Trademark Office,
continuous use of the mark in commerce
since 1852, and registration of the mark in Respondent’s purported country of
residence, China. 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.); 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 <wellsfargocreditcard.com>,
<wellsfargofinancials.com>, <wellsfargomortagage.com>,
<yourswellsfargomortage.com> and <yourwellsfargohomemorgage.com>
domain names are confusingly similar to Complainant’s WELLS FARGO mark. Respondent’s domain names fully incorporate
Complainant’s mark, and only deviate with the addition of the generic top-level
domain
(“gTLD”) “.com” and the addition of generic terms some of which are
related to Complainant’s business. The
addition of “.com” and generic terms to Complainant’s mark does not distinguish
the domain names pursuant to Policy ¶ 4(a)(i).
See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“the fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to
establish identity or confusing similarity for
purposes of the Policy despite the addition of other words to such marks”); see
also Treeforms, Inc. v. Cayne Indus.
Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that
confusion would result when Internet users, intending to access Complainant’s
website, think that an affiliation of some sort exists between Complainant and
Respondent, when in fact, no such relationship would
exist); see also Space Imaging LLC v. Brownell, 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).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain
names. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless
clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights
or legitimate
interests in the domain names. See
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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which
could demonstrate any rights or legitimate interests in the
domain name).
Respondent
is not authorized or licensed by Complainant to use the WELLS FARGO mark in the
domain names. No evidence before the
Panel suggests Respondent is commonly known by the domain names 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 Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where Respondent was not commonly known by the mark
and
never applied for a license or permission from Complainant to use the
trademarked name); 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).
Respondent’s
disputed domain names are confusingly similar to Complainant’s mark and are
used to redirect Internet users to websites
that feature pop-up advertisements,
search engines and links to third-party businesses that compete directly with
Complainant. Such use has consistently
and frequently been found not to be a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See eBay
Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of
complainant’s entire mark in infringing domain names makes it difficult to
infer
a legitimate use."); see also 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).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <wellsfargocreditcard.com>, <wellsfargofinancials.com>,
<wellsfargomortagage.com>, <yourswellsfargomortage.com>
and <yourwellsfargohomemorgage.com> domain names in bad faith
pursuant to Policy ¶ 4(b)(iv).
Specifically, uncontested evidence indicates that the subject domain
names earn referral-fee revenue for Respondent through pay-per-click
advertising. Thus, the Panel infers
that Respondent commercially benefits from its use of Complainant’s WELLS FARGO
mark in the domain names. 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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent).
Respondent is
using the disputed domain names to redirect Internet users to a website that offers
a search engine, pop-up advertisements and links to various financial-related
websites. Complainant’s business offers
financial-related goods and services.
The Panel finds that, by creating confusion around Complainant’s mark,
Respondent is attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to
offers goods and services similar to Complainant’s goods and services is
evidence of bad
faith registration and use of the domain names 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 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 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 <wellsfargocreditcard.com>, <wellsfargofinancials.com>,
<wellsfargomortagage.com>, <yourswellsfargomortage.com>
and <yourwellsfargohomemorgage.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 10, 2004
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