DECISION

Wells Fargo & Company v. Azra Khan

Claim Number: FA0211000135009

PARTIES

Complainant is Wells Fargo & Company, Minneapolis, MN, USA (“Complainant”) represented by Eunice P. de Carvalho, of Faegre & Benson LLP.  Respondent is Azra Khan, Rawalpindi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <welllsfargo.com>, registered with iHoldings.com, Inc. d/b/a DotRegister.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his 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 November 25, 2002; the Forum received a hard copy of the Complaint on November 26, 2002.

On December 9, 2002, iHoldings.com, Inc. d/b/a DotRegister.com confirmed by e-mail to the Forum that the domain name <welllsfargo.com> is registered with iHoldings.com, Inc. d/b/a DotRegister.com and that Respondent is the current registrant of the name.  iHoldings.com, Inc. d/b/a DotRegister.com has verified that Respondent is bound by the iHoldings.com, Inc. d/b/a DotRegister.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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 30, 2002 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@welllsfargo.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 January 8, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant argues that Respondent’s <welllsfargo.com> domain name is confusingly similar to Complainant’s WELLS FARGO mark.

2. Complainant argues that Respondent does not have rights or legitimate interests in the <welllsfargo.com> domain name.

3. Complainant argues that Respondent registered and used the <welllsfargo.com> domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

For over 150 years, Complainant, Wells Fargo & Company, has engaged in providing quality banking and financial goods and services to the public under the WELLS FARGO mark. Complainant has become one of the world’s largest financial institutions. Complainant has invested a massive amount of resources in marketing and advertising the WELLS FARGO mark. Through this extensive marketing, Complainant’s mark has become associated with high quality and reliable financial services.

Complainant holds numerous valid registrations for the WELLS FARGO mark and other variations incorporating the WELLS FARGO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos. 779,187; 838,059; 891,203; 1,131,103; 1,136,497; 1,138,966; 1,167,626; 1,181,279; 1,268,820; 1,273,144; 1,274,680; 2,555,996; 2,555,997; 2,561,807; and 2,597,836). In addition to the many domestic trademarks, Complainant maintains over 170 international trademarks, including in Pakistan, Respondent’s country of record (Reg. Nos. 50,432 and 132,483).  

Respondent registered the <welllsfargo.com> domain name on May 1, 2002. Respondent’s <welllsfargo.com> domain name redirects Internet users to the commercial website, <ownbox.com>. After being redirected to <ownbox.com>, consumers are inundated with pop-up advertisng windows for gambling as well as links to other websites that offer such things as home mortgage loans and dating services.

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 the 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 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 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 with the USPTO, the proper Pakistani authorities, and subsequent continuous use of the mark.

Respondent is engaging in typosquatting. Typosquatting is the intentional registration of a domain name that is a misspelling of a distinctive or famous mark, causing an Internet user who makes a slight spelling or typing error to reach an unintended website. The addition of an “L” to the WELLS FARGO mark does not significantly alter the mark so as to distinguish it from Complainant’s famous mark. Therefore, Respondent’s  <welllsfargo.com>  domain name is confusingly similar to the WELLS FARGO mark under a Policy ¶ 4(a)(i) confusingly similar analysis. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to Complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).

Accordingly, the Panel finds that Respondent’s <welllsfargo.com> domain name is confusingly similar to Complainant’s mark and thus Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Respondent did not respond to the Complaint, thereby allowing the Panel to accept as true all reasonable inferences alleged by Complainant. The initial burden rests with Complainant to allege a prima facie case; then the burden shifts to Respondent to rebut Complainant’s allegations. Respondent, by failing to reply, failed to fulfill its burden of demonstrating rights or legitimate interests in the disputed domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”);  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).  There is no evidence that contradicts Complainant’s allegations.  Complainant has presented evidence that substantiates its claim that Respondent has no rights or legitimate interests in the contested <welllsfargo.com> domain name.

Respondent’s <welllsfargo.com> domain name has been used to link Internet users to the commercial website <ownbox.com>. Respondent’s handling of the domain name shows that it is intentionally using the fame of Complainant’s mark to attract Internet traffic to another website, which has no association with Complainant. Respondent’s behavior relating to its use of the domain name does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also 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).

There have been no assertions made by Respondent that it is “commonly known” by the <welllsfargo.com> domain name. Complainant has established itself as the premier holder of all rights and legitimate interests in the WELLS FARGO mark. Since Respondent did not submit a reply to Complainant’s allegations, no viable alternative supporting the rationale behind the use of Complainant’s mark has been suggested. Thus, the Panel accepts Complainant’s allegations that Respondent has no rights or legitimate interests to the domain name under Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also 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).

Respondent used the <welllsfargo.com> domain name to divert Internet users to the commercial website located at <onebox.com>. Moreover, since Respondent was intentionally diverting Internet consumers, it follows that Respondent has not engaged in a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <welllsfargo> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Respondent registered and is using the disputed domain name in bad faith. Complainant’s WELLS FARGO mark is registered with the Pakistani trademark authorities, thereby placing Respondent on constructive notice of Complainant’s rights in the WELLS FARGO mark.  Moreover, given the worldwide identification of the WELLS FARGO mark with Complainant, it can also be inferred that Respondent was aware of the mark, and therefore had notice of Complainant’s rights. Respondent’s registration of the disputed domain name thereafter, containing Complainant’s mark despite knowledge of Complainant’s rights, is evidence of bad faith registration. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Respondent, by means of linking <welllsfargo.com> to the commercial website <ownbox.com>, used the domain name in bad faith as outlined in Policy ¶ 4(b)(iv). Respondent is intentionally trying to attract Internet consumers to its website for commercial gain by deliberately creating a likelihood of confusion between Respondent’s domain name and Complainant’s mark. It can be presumed that Respondent is engaging in the intentional misdirection of Internet traffic to other websites for commercial gain. This behavior is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Accordingly, the Panel finds that Respondent registered the <welllsfargo.com> domain name in bad faith; thus Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is ordered that the domain name <welllsfargo.com> be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:   January 13, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/39.html