Generic Top Level Domain Name (gTLD) Decisions

DECISION

Wells Fargo & Company v. Party Night Inc. and Peter Carrington

Claim Number:  FA0302000144647

PARTIES

Complainant is Wells Fargo & Company, Minneapolis, MN, USA (“Complainant”) represented by Jodi A. DeSchane, of Wells Fargo. Respondent is Peter Carrington Party Night, Inc., Amsterdam, NL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com>, registered with Key-Systems Gmbh.

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 (the "Forum") electronically on February 6, 2003; the Forum received a hard copy of the Complaint on February 7, 2003.

On February 7, 2003, Key-Systems Gmbh confirmed by e-mail to the Forum that the domain names <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> are registered with Key-Systems Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh 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 February 12, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 4, 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@wellssfargo.com, postmaster@weellsfargo.com, postmaster@wellesfargo.com, postmaster@wellfargospecial.com, postmaster@welsfargospecial.com, postmaster@yourwellsfargomorgage.com and  postmaster@yourwellsfargomotgage.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 March 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) 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 <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> 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, Wells Fargo & Company, holds at least 15 trademark registrations for the WELLS FARGO mark (e.g. U.S. Reg. No. 779,187, registered on the Principal Register of the United States Patent and Trademark Office on October 27, 1964). In addition to these U.S. registered marks, Complainant holds valid registrations in numerous countries worldwide, including the Netherlands (Reg. No. 00440).

Complainant has operated under its WELLS FARGO marks since 1852 in conjunction with its business of providing banking and financial related goods and services to the public. As a means of interacting with the public and further promoting its WELLS FARGO mark, Complainant registered the <wellsfargo.com> domain name in 1994.

Respondent, Party Night Inc. and Peter Carrington, registered the <weellsfargo.com> and <wellesfargo.com> domain names on May 30, 2002. On August 8, 2000, Respondent registered the <wellssfargo.com> domain name. Respondent uses these domain names to redirect Internet users to a website hosted at <hanky-panky-college.com>, featuring adult-oriented images and pop-up advertisements.

Respondent registered the <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names on December 15, 2002. Respondent uses these domain names to redirect Internet users to a website hosted at <yes-yes-yes.com>, which features pop-up advertisements. Respondent is not licensed or authorized to use Complainant’s WELLS FARGO mark for any purpose.

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 rights in the WELLS FARGO mark through registration on the Principal Register of the U.S. Patent and Trademark Office and in the Netherlands, as well as through widespread and continuous use of the mark in commerce for over 150 years.

Respondent’s <wellssfargo.com>, <weellsfargo.com> and <wellesfargo.com> domain names are each confusingly similar to Complainant’s WELLS FARGO mark. Each domain name merely misspells the word WELLS in Complainant’s mark through the addition of extra letters. These misspellings do not create a distinct mark or alleviate any confusing similarity with Complainant’s mark. 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 Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).

Respondent’s <wellfargospecial.com> and <welsfargospecial.com> domain names are also confusingly similar to Complainant’s WELLS FARGO mark. With these domain names, Respondent misspells the word WELLS in Complainant’s WELLS FARGO mark, and then adds the additional word “special.” The addition of the generic word “special” does not create a notable distinction any more than does the misspelling of one word in Complainant’s mark. 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 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).

Finally, Respondent’s <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark. These domain names completely incorporate Complainant’s WELLS FARGO mark, the only distinction being the addition of the generic word “your” and the addition of a misspelling of the word “mortgage.” The word “your” is as inconsequential an addition as the word “special,” and the word “mortgage” (misspelled) describes the type of business in which Complainant regularly engages. As such, both domain names remain confusingly similar to Complainant’s mark. See Space Imaging LLC v. Brownwell, 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); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

Accordingly, the Panel finds that the <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names are each confusingly similar to Complainant’s WELLS FARGO mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has the burden of showing the Respondent has no rights or legitimate interests in the disputed domain names. Complainant can meet this burden, thus shifting it to Respondent, by demonstrating that none of the three enumerated protections for domain name registrants in Policy ¶ 4(c)(i)-(iii) are available to Respondent. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements, its modus operandi for the <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names, does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). As such use is commercial in nature, this diversionary exploitation of Complainant’s marks is not a legitimate noncommercial or fair use of the domain names, and Policy ¶ 4(c)(iii) does not apply.  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); 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).

In addition to the reasons stated above, the Panel finds that Respondent’s diversionary use of the <weellsfargo.com>, <wellesfargo.com> and <wellssfargo.com> domain names, which sends Internet users to an adult-oriented website, tarnishes Complainant’s mark. This tarnishing activity is not a bona fide offering of goods or services, nor is it a legitimate noncommerical or fair use of the domain names. See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent’s WHOIS contact information, and the nature of Complainant’s famous and distinctive mark, both lead the Panel to conclude that Respondent was not “commonly known by” any of the disputed domain names prior to this dispute, thus making Policy ¶ 4(c)(ii) inapplicable to Respondent. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also 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").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Considering that no Response was submitted in this dispute, the Panel chooses to view all allegations and inferences contained within the Complaint in a light most favorable to Complainant. 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 Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the Respondent’s failure to respond: (1) the Respondent does not deny the facts asserted by the Complainant, and (2) the Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

The Panel infers from Complainant’s uncontested allegations that Respondent redirects the disputed domain names to the <hanky-panky-college.com> and <yes-yes-yes.com> domain names in order to receive referral fees, commissions, or some other form of commercial gain. In registering misspelled and confusingly similar variations of Complainant’s WELLS FARGO mark for this purpose, Respondent fosters a likelihood of confusion in the minds of Internet users for commercial gain, evidence of bad faith use and registration of a domain name pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website, presumably receiving a portion of the advertising revenue from the site, thus using a domain name to attract Internet users for commercial gain).

In addition, Respondent’s tarnishing use of the <weellsfargo.com>, <wellesfargo.com> and <wellssfargo.com> domain names to redirect Internet users to adult-oriented websites is further evidence of bad faith. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

The Panel thus finds that Respondent registered and used the <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wellssfargo.com>, <weellsfargo.com>, <wellesfargo.com>, <wellfargospecial.com>, <welsfargospecial.com>, <yourwellsfargomorgage.com> and <yourwellsfargomotgage.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: March 18, 2003

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