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Wachovia Corporation v. Organized Crime, Inc. [2002] GENDND 865 (13 June 2002)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wachovia Corporation v. Organized Crime, Inc.

Case No. D2002-0362

Complainant is Wachovia Corporation, formerly First Union Corporation, a North Carolina corporation with its principal place of business in Charlotte, North Carolina, United States of America ("Complainant").

Respondent, is Organized Crime, Inc., status and structure unknown, with an address in Henderson, Nevada, United States of America ("Respondent").

The domain name at issue is <firstunioncredit.com>, registered with Innerwise, Inc. d/b/a ItsYourDomain.com ("Innerwise"), 1005 W. Wise Road, Second Floor, Schaumburg, Illinois 60193, United States of America.

The WIPO Arbitration and Mediation Center ("the Center") received the Complaint by e-mail on April 17, 2002, and in hard copy form on April 22, 2002. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The formal date of the commencement of this Administrative Proceeding is April 23, 2002.

On April 22, 2002, Innerwise confirmed by e-mail to the Center that <firstunioncredit.com> is registered with Innerwise and that Respondent is the current registrant of the domain name.

On April 23, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via overnight courier, e-mail and facsimile to the addresses and numbers Respondent provided in its registration. The Center also used the additional e-mail addresses provided by the Complainant as possible ways to reach Respondent. The Center advised, inter alia, that the response was due by May 13, 2002. According to the courier tracking information, the package was delivered to Henderson, Nevada and signed for by an "R. Elkins" on April 25, 2002. The Center’s e-mail to the Administrative Contact Respondent had provided to Innerwise, <helen@sentbyemail.com> -- was responded to by "ME" at <info@sentbyemail.com> on April 23, 2002 with the following: "This company is not known to us? Organized Crime, Inc.? There must be some error?" Neither of the addressees at the additional e-mail addresses submitted by Complainant responded, and the facsimile number Respondent provided was not in service.

On April 23, 2002, Complainant notified the Center via e-mail that it had been unsuccessful in reaching Respondent at the address indicated in the WHOIS listing: the package Complainant had mailed to Respondent on April 17, 2002, containing a copy of the complaint, had been returned to Complainant by the postal service marked "Return to Sender: Attempted – Not Known".

On May 16, 2002, having received no Response or other communication from Respondent, the Center e-mailed a Notification of Respondent Default to both parties, using the aforementioned e-mail addresses to reach Respondent. On May 29, 2002, the Center issued a Notification of Appointment of Administrative Panel and Projected Decision Date of June 12, 2002 to both parties. This Notification informed the parties that, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the Center had appointed Sally M. Abel as sole panelist. The decision date was subsequently extended to June 19, 2002.

Having reviewed the communication records in the case file, the Administrative Panel ("the Panel") finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "[t]o employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel shall issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from Respondent.

Complainant, a holding company with numerous subsidiaries, is one of the largest financial institutions in the United States with a customer base of over sixteen million (16,000,000) customers. Through its subsidiaries, Complainant has used a family of FIRST UNION service marks in connection with banking and financial services since 1958. Complainant owns twenty-three (23) United States federal and twenty-five (25) state service marks in the U.S. for FIRST UNION for various financial services, as indicated in Annex 4 to the Complaint. Complainant has invested and continues to invest significant money and effort in advertising, promoting, and marketing its various banking, financial, investment, credit and insurance services using its FIRST UNION marks. Complainant alleges that it has achieved substantial consumer recognition and goodwill in FIRST UNION by virtue of Complainant’s extensive and continuous use of FIRST UNION as a mark for over forty (40) years.

Complainant further promotes its services by operating a full-service web site on the Internet where consumers may obtain information about Complainant’s services and perform on-line transactions. The web site is linked to several Internet domain names including, but not limited to <firstunion.com>. Additionally, Complainant uses the domains <firstunioncreditcard.com> and <firstunioncreditcards.com> to promote bank card services under the FIRST UNION mark.

On February 16, 2002, Respondent obtained the domain name <firstunioncredit.com>, as indicated in the WHOIS registration record in Annex 1 to the Complaint. There has never been any relationship between Complainant and Respondent. <firstunioncredit.com> connects to <temptationsatwork.com>, an escort service or, as stated on the web site, a "brand new form of global staffing agency, a mix of traditional Secretarial and I.T. temping agency with Escorts, Hosts, Translators creating our famous ‘SEXETARIES.’" As found in Annex 5 to the Complaint, this web site contains several photographs of women in short skirts and ends with the statement "discreetly mixing pleasure with business". From the meta-tag headers on the page, these services apparently are available in London, Las Vegas, New York, Los Angeles, and Salt Lake City. The web site also includes the statement "You have arrived here as a result of third party advertising."

On March 13, 2002, Complainant made efforts to locate Respondent through the Nevada Secretary of State’s Office, the Nevada Clark County Business License Office, and the City of Las Vegas Business License Office. Complainant reports that none of these offices had any record of a company named "Organized Crime, Inc." Complainant also attempted telephone contact with Respondent, but found Respondent’s telephone number, which begins with a Utah area code, non-operational.

Complainant asserts:

(1) that Respondent’s domain, <firstunioncredit.com>, is confusingly similar to Complainant’s FIRST UNION service mark(s);

(2) that Respondent has no rights or legitimate interest in respect of the domain name because: Respondent is not licensed or otherwise authorized to use Complainant’s family of FIRST UNION marks; Respondent’s use of <firstunioncredit.com> is not in connection with a "bona fide" offering of goods or services, but with "illicit, if not illegal" services offered at the <temptationsatwork.com> web site; Respondent’s marketing of services under a domain name formed by adding a descriptive term to another party’s famous trademark is not a "bona fide" offering; Respondent has never been known by the disputed domain and, in fact, Respondent’s true identity is unknown.

(3) that Respondent registered and is using the domain in bad faith because: Respondent is making illegitimate commercial use of <firstunioncredit.com> intentionally diverting consumers who seek Complainant’s financial services by creating a likelihood of consumer confusion for material gain; Respondent is tarnishing the FIRST UNION marks by associating the domain with escort services; and Respondent fraudulently concealed its true identity and contact information in obtaining the domain name.

Complainant seeks transfer of the domain name.

Respondent has not contested the allegations of the Complaint.

Respondent has defaulted. Paragraph 14 of the Rules provides that in the event of a default, the Panel shall proceed to a decision on the complaint, drawing such inferences as it deems appropriate. Paragraph 15(a) of the Rules instructs the Panel to render the decision on the basis of the statements and documents submitted, and the Rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that Complainant must prove, each of the following:

(i) The domain name is identical or confusingly similar to a mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The domain at issue is identical or confusingly similar to Complainant’s FIRST UNION mark. The only difference between FIRST UNION and the disputed domain is that Respondent has added the generic word "credit," which Complainant also uses in connection with FIRST UNION. The addition of such a generic term to a mark does not detract from the identity or confusing similarity of the domain.

Respondent has no rights or legitimate interest in the <firstunioncredit> domain.

The undisputed facts indicate that Respondent intends to mislead consumers seeking information about FIRST UNION financial services to the <temptationsatwork.com> escort service web site. Creating a likelihood of confusion for the purpose of misleading consumers to Respondent’s web site for commercial gain, in and of itself, establishes bad faith registration and use of <firstunioncredit.com>. Complainant has met its burden; Respondent, by its silence has affirmed Complainant’s allegations.

The Panel further notes the results of her independent investigation of Complainant’s allegation that Respondent has concealed its true identity. It appears that Respondent, Stealth Commerce, Lost in Space, and a fourth entity named Telmex Management Services all appear to be controlled by the same individual or individuals, who may or may not be Helen Bradbury (Respondent’s Administrative Contact), Juan Miguel, Mark Townsend, Marlies Bilham, or Antoinne Rousseau. This consortium of individuals and seemingly non-existent entities appears to be engaged in a complex scheme of obtaining domains based on others’ trademarks and linking them to web sites advertising escort services.

Because the undisputed evidence permits a finding in favor of Complainant on each element of its claim; and there is no evidence to the contrary, the Panel decides that Complainant has met its burden of proof with respect to each of the three elements of Paragraph 4(a) of the Policy:

(i) the domain name is identical or confusingly similar to Complainant’s mark;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the domain name at issue be transferred to Complainant.

Sally M. Abel
Sole Panelist

Dated: June 13, 2002

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