DECISION

Wells Fargo & Company v. Seventh Summit Ventures

Claim Number:  FA0304000155463

PARTIES

Complainant is Wells Fargo & Company, Minneapolis, MN, USA (“Complainant”) represented by Jodi A. DeSchane, of Faegre & Benson LLP. Respondent is Seventh Summit Ventures, St. Johns, WEST INDIES  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com>, registered with Tucows, Inc.

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 April 24, 2003; the Forum received a hard copy of the Complaint on April 25, 2003.

On April 24, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 April 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@wallsfargo.com, postmaster@wellsfagro.com, postmaster@wellsfargoo.com, postmaster@wellsfarog.com, postmaster@wellsfatgo.com, postmaster@wellsfrago.com and postmaster@wellsfsrgo.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 May 22, 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 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

Since 1852, Complainant, Wells Fargo & Co., has been engaged in providing quality banking, financial and related goods and services to the public under the WELLS FARGO family of marks. In the U.S., Complainant holds numerous registrations for the WELLS FARGO mark, including 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; 2,555,997; 2,561,807; and 2,597,836. Complainant’s U.S. Patent and Trademark Office registrations date back to 1964.

Complainant holds the domain name registration for <wellsfargo.com> and has been operating a website at that location since 1994. Complainant’s website informs the public as well as Complainant’s present and potential customers of the broad array of services it offers under the WELLS FARGO mark. Complainant provides many of these services to customers directly via the Internet.

The WELLS FARGO family of marks is of significant value to Complainant. Complainant closely controls the use and reproduction of the marks to ensure that Internet users, current and potential customers can rely upon these marks as signifying Complainant’s banking and financial services.

Respondent, Seventh Summit Ventures, registered the seven disputed domain names between November  17, 2000 and December 26, 2001. Respondent’s domain names resolve to <superinternetdeals.com>, which is connected to a website that features advertisements for various goods and services, including financial services. Respondent’s <superinternetdeals.com> website also contains several pop-up advertisements.

Complainant’s submission reveals that Respondent has been involved in previous domain name disputes that involve established marks. See, e.g., Microsoft Corp. and MSNBC Cable LLC v. Seventh Summit Ventures, D2003-0567 (WIPO Aug. 14, 2002); The NASDAQ Stock Mkt., Inc. v. Seventh Summit Ventures, D2001-1497 (WIPO Mar. 15, 2002); Delta Corporate Identity, Inc. v. Seventh Summit Ventures, FA 106112 (Nat. Arb. Forum May 6, 2002); and Bank of America v. Seventh Summit Ventures, FA 133621 (Nat. Arb. Forum Dec. 31, 2002).

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 and continuous use of the mark in commerce since 1852.

Respondent’s <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com> domain names are confusingly similar to Complainant’s WELLS FARGO mark. Respondent’s second-level domains infuse grammatical errors and minor deviations into Complainant’s mark. Regarding <wallsfargo.com>, Respondent has merely misspelled the “Wells” portion of the mark. Respondent’s <wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com> domain names merely misspell the “Fargo” portion of Complainant’s mark. The intentional misspelling of a famous mark in a domain name does not create a distinct mark, but is nevertheless confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, Complainant’s submission has gone unopposed and the arguments unrefuted. In the absence of a Response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Further, because Respondent has failed to submit a Response, Respondent has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the disputed domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also 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).

Respondent is not using the subject domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). Uncontested evidence reveals that Respondent’s domain names redirect unsuspecting Internet users to <superinternetdeals.com>, a commercial website that offers products and services that are in competition with Complainant’s financial services. Additionally, Respondent’s website makes use of pop-up advertisements, further supporting a finding that Respondent reaps commercial gain from its infringing use of Complainant’s mark in the domain names. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the WELLS FARGO moniker; thus, Respondent fails to establish rights in the domain names. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

No evidence before the Panel suggests Respondent is commonly known by the domain names under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain names is “Seventh Summit Ventures,” and not one of the confusing second-level domains that infringe on Complainant’s WELLS FARGO mark. Moreover, Respondent is not authorized or licensed to make use of Complainant’s mark for any purpose, or in connection with any online offering. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Although Respondent’s registration and use of the subject domain names satisfy various bad faith criteria under the Policy, the Panel finds Respondent acted in bad faith under Policy ¶ 4(b)(iv). Specifically, Respondent makes use of confusingly similar variations of Complainant’s famous WELLS FARGO mark to ensnare unsuspecting Internet users. Respondent then redirects the users to its competing website where they are then confronted with various pop-up advertisements. The content displayed on Respondent’s website, located at <superinternetdeals.com>, creates a presumption that Respondent is commercially profiting from the unauthorized use of Complainant’s established mark in its domain names. Additionally, unrefuted evidence reveals that Respondent is a habitual typosquatter, meaning Respondent has a history of registering confusingly similar variations of famous marks in domain names in order to commercially benefit. Such infringement is what the Policy was intended to remedy. See AutoNation Holding Corp. v. Rabea Alawneh, D2002-0581 (WIPO May 2, 2002) (The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else"); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also 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)).

The Panel finds that Policy ¶ 4(a)(iii) has been 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 <wallsfargo.com>, <wellsfagro.com>, <wellsfargoo.com>, <wellsfarog.com>, <wellsfatgo.com>, <wellsfrago.com>, and <wellsfsrgo.com> domain names be TRANSFERRED from Respondent to Complainant.

__________________________________________________________________

                                                                                   

Honorable Paul A. Dorf (Ret.), Panelist

Dated:   June 10, 2003