national arbitration forum

DECISION

Wells Fargo & Company v. Alvaro Collazo

Claim Number:  FA0412000373882

PARTIES

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 Alvaro Collazo (“Respondent”), Manuel Oribe 2028, Tarariras, Colinia 7000, URUGUAY.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2004; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2004.

On December 2, 2004, Iholdings.Com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum that the domain names <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.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 December 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 27, 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@qwellsfargo.com, postmaster@sellsfargo.com, postmaster@swellsfargo.com and postmaster@wsellsfargo.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 January 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.

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 <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark.

2. Respondent does not have any rights or legitimate interests in the <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.com> domain names.

3. Respondent registered and used the <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.com> domain names in bad faith.

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

FINDINGS

Complainant, Wells Fargo & Company, provides 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 with trademark authorities worldwide.

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 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 <qwellsfargo.com> domain name on Septerber 9, 2004, the <sellsfargo.com> domain name on September 19, 2003, and the <swellsfargo.com> and <wsellsfargo.com> domain names on March 12, 2004.  All of Respondent’s domain names resolve to a standard “parking” website with no active content.

 

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 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 the 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 domain names are confusingly similar to Complainant’s WELLS FARGO mark because each domain name incorporates Complainant’s mark in its entirety and merely inserts an extra letter.  Respondent’s <qwellsfargo.com> domain name simply adds the letter “q” before Complainant’s famous mark.  Respondent’s <sellsfargo.com> domain name replaces the letter “w” in WELLS with the letter “s.”  Lastly, Respondent’s <swellsfargo.com> and <wsellsfargo.com> domain names insert the letter “s” into Complainant’s mark.  Such minor changes are insufficient to negate a finding of confusing similarity between Respondent’s domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Moreover, the mere addition of the generic top-level domain “.com” is not enough to overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).

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

Rights or Legitimate Interests

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 names.  Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed 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).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain names.  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 names pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain, one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

Respondent has made no use of the disputed domain names; as such, it cannot be said to be making a bona fide offering of goods or services, nor can it be said to be making a legitimate noncommercial or fair use of the domain names. In these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Moreover, the fact that Respondent’s domain names are merely typosquatted variations of Complainant’s mark tends to prove that Respondent lacks any rights or legitimate interests in the disputed domain names 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.

Registration and Use in Bad Faith

Respondent has made no use of the disputed domain names since registration. The Panel does not find it necessary to wait until Respondent uses the domain names to find bad faith registration and use because the Panel concludes that any use of the domain names would cause consumer confusion and violate Policy ¶ 4(a)(iii). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(a)(iii) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where Respondent made no use of the domain name in question and there are no other indications that Respondent could have registered and used the domain name in question for any non-infringing purpose).

Furthermore, Respondent’s registration of the disputed domain names, which are confusingly similar variations of Complainant’s well-known WELLS FARGO mark, suggests that Respondent knew of Complainant’s rights in the WELLS FARGO mark. Additionally, Complainant’s numerous trademark registrations on file at the USPTO gave Respondent constructive notice of Complainant’s mark. Therefore, the Panel finds that Respondent chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s mark, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Moreover, the fact that Respondent’s domain names are merely typosquatted variations of Complainant’s WELLS FARGO mark is itself evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark. "Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."); see also K.R. USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names were typosquatted versions of Complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks. "Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of typosquatting, in which Respondent has engaged, has been deemed behavior in bad faith.").

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <qwellsfargo.com>, <sellsfargo.com>, <swellsfargo.com> and <wsellsfargo.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  January 19, 2005

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