DECISION

Wells Fargo & Company v. Ling Shun Shing

Claim Number:  FA0310000205699

PARTIES

Complainant is Wells Fargo & Company (“Complainant”) represented by Adam Lindquist Scoville of Faegre & Benson, LLP, 1700 Lincoln Street, Suite 3200, Denver, CO 80202-4004. Respondent is Ling Shun Shing, 138 Yi Xue Yuan Rd., Shangai, P.R. China 200032 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <fellsfargo.com>, <wellasfargo.com>, <wellefargo.com>, <wellfargofinancial.com>, <wellfargos.com>, <wellfsfargo.com>, <wellsafargo.com>, <wellsfarago.com>, <wellsfarego.com>, <wellsfarfgo.com>, <wellsfargol.com>, <wellsfargoretirement.com>, <wellsgfargo.com>, <wellwfargo.com> and <yourwellfargomortgage.com> (hereinafter the “disputed domain names”) 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 24, 2003; the Forum received a hard copy of the Complaint on October 27, 2003.

On October 29, 2003, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the disputed domain names 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 October 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 2003 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@fellsfargo.com, postmaster@wellasfargo.com, postmaster@wellefargo.com, postmaster@wellfargofinancial.com, postmaster@wellfargos.com, postmaster@wellfsfargo.com, postmaster@wellsafargo.com, postmaster@wellsfarago.com, postmaster@wellsfarego.com, postmaster@wellsfarfgo.com, postmaster@wellsfargol.com, postmaster@wellsfargoretirement.com, postmaster@wellsgfargo.com, postmaster@wellwfargo.com and postmaster@yourwellfargomortgage.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 November 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 disputed domain names are confusingly similar to Complainant’s WELLS FARGO mark.

2. Respondent does not have any rights or legitimate interests in the disputed domain names.

3. Respondent registered and used the disputed domain names in bad faith.

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

FINDINGS

Complainant holds a number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WELLS FARGO mark, including Reg. No. 779,187 (registered on October 27, 1964) in relation to banking and trust services. Complainant also holds valid registrations for the mark in a number of other countries, including the People’s Republic of China.

Complainant uses its websites at the domain names <wellsfargo.com> and <wellsfargofinancial.com> to inform present and potential customers of the broad array of services offered by Complainant.

Respondent registered the disputed domain names between September 9, 2002 and October 14, 2002. Respondent is using the domain names to redirect Internet traffic to a website that features pop-up advertising and links to various third-party websites.

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 demonstrated that it has rights in the WELLS FARGO mark through registration with the USPTO. See 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).

Complainant contends that the disputed domain names are confusingly similar to Complainant’s WELLS FARGO mark because the domain names appropriate the mark and either add, subtract or substitute one letter, or add generic or descriptive terms such as “financial,” “retirement,” “your” or “mortgage.” Neither the alteration of the WELLS FARGO mark by one letter nor the addition of generic or descriptive terms sufficiently distinguish the disputed domain names from the mark under Policy ¶ 4(a)(i). See 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); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward with a Response. Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true. See 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); 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).

Furthermore, Respondent has failed to invoke any circumstances that could demonstrate rights to or legitimate interests in the domain names. Once Complainant has asserted a prima facie case against Respondent, the burden shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the disputed domain names to redirect Internet traffic to a website that features pop-up advertising and links to various third-party websites. Respondent’s unauthorized commercial use of domain names confusingly similar to Complainant’s mark represents neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent presumably receives compensation for each misdirected Internet user. See 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 WeddingChannel.com Inc. v. Vasiliev a/k/a NA, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

Moreover, Respondent has proffered no proof and no evidence in the record suggests that Respondent is commonly known by any of the disputed domain names. Accordingly, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the domain names with regard 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 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).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s bad faith registration and use of domain names confusingly similar to Complainant’s WELLS FARGO mark is established by Respondent’s use of the domain names to earn referral-fee revenue through pop-up advertising and links to various third-party websites. Such use establishes Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is using the disputed domain names to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark. See 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); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Furthermore, based on Respondent’s registration and use of multiple domain names confusingly similar to Complainant’s WELLS FARGO mark, the Panel presumes Respondent had actual or constructive notice of Complainant’s rights in its mark. The registration and use of a domain name incorporating the mark of another despite actual or constructive knowledge of the mark holder’s rights in the mark demonstrates bad faith registration and use under 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 Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

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

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 <fellsfargo.com>, <wellasfargo.com>, <wellefargo.com>, <wellfargofinancial.com>, <wellfargos.com>, <wellfsfargo.com>, <wellsafargo.com>, <wellsfarago.com>, <wellsfarego.com>, <wellsfarfgo.com>, <wellsfargol.com>, <wellsfargoretirement.com>, <wellsgfargo.com>, <wellwfargo.com> and <yourwellfargomortgage.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 8, 2003

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