Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Wells Fargo & Company , Minneapolis, MN, USA ("Complainant") represented by Seema R Shah, Faegre & Benson. The Respondent is John Dow Stoneybrook, Belize City, Belize ("Respondent").

The domain name at issue is wellfargo.com registered with Tucows.

The Panelist 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 the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 26, 2000; The Forum received a hard copy of the Complaint on September 25, 2000.

On September 28, 2000 Tucows confirmed by e-mail to the Forum that the domain name wellfargo.com is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 28, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 18, 2000 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@wellfargo.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 October 25, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 Uniform 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 the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

The Respondent did not submit a response. Accordingly, all reasonable inferences of fact in the Complaint will be deemed to be true.

Complainant holds numerous trademark registrations in the United States and Internationally for the mark WELLS FARGO. Complainant also holds a registration for the domain name wellsfargo.com, which Complainant has continuously used since 1994.

Respondent registered the domain name wellfargo.com in 1997, after the WELLS FARGO marks were already distinctive and famous. Respondent is currently using the domain name wellfargo.com to divert Internet users to web sites identified with the domain names freelotto.com and otcstreet.com. Respondent has registered multiple domains names that Respondent knows or should know are confusingly similar to the distinctive and or famous marks of others, including: wwwnewyorktimes.com, wwwamericawestairlines.com, fideliy.com, wwwlexus.com, wwwsportsillustrated.com, cbsspotsline.com, wwwnorthwestairlines.com, atlavisa.com.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name wellfargo.com is confusingly similar to Complainant’s WELLS FARGO mark. The fact that an ‘s’ has been omitted from the Complainant’s mark, or that ‘.com’ has been added to the end does nothing to negate a finding that the domain name is confusingly similar to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). In fact, such a minor change reinforces a finding of confusing similarity. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name geociites.com, which merely adds an additional ‘i' is confusingly similar to Complainant’s GEOCITIES mark).

The UDRP provides a Respondent with the opportunity to demonstrate whether it has any rights or legitimate interest in the domain name at issue. In this instance, the Respondent has failed to demonstrate its rights. Therefore, this panel deems it appropriate to infer that the Respondent has no such rights or interests. See ICANN RULES ¶ 14(b).

Respondent registered and is using the domain name wellfargo.com in bad faith. At the time Respondent registered the domain name, Complainant’s marks were sufficiently distinctive or famous to give constructive notice to Respondent that the registration of wellfargo.com would violate Complainant’s rights. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

Respondent is using the domain name to attract Internet users to another on-line location in violation of ICANN POLICY ¶ 4(b)(iv). The evidence presented indicates that the wellfargo.com domain name is being used to attract Internet users to two other on-line locations where on-line lottery and on-line trivia games may be played. This diversion evidences bad faith under the ICANN POLICY. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Respondent’s registration of wellfargo.com is part of a larger pattern of conduct where Respondent prevents trademark owners from reflecting their marks in corresponding domain names in violation of ICANN POLICY ¶ 4(b)(iii). See The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith). See also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites).

Having established all three elements required by the ICANN Policy, it is the decision of this panel that the requested relief be granted.

Accordingly, it is ordered that the domain name wellfargo.com be transferred from the Respondent to the Complainant.