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Generic Top Level Domain Name (gTLD) Decisions |
Wells Fargo & Company v. John Doe as
Holder of Domain Name <wellzfargo.com>
Claim
Number: FA0411000362108
Complainant is Wells Fargo & Company (“Complainant”),
represented by Adam Lindquist Scoville of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202-4004. Respondent is John Doe as Holder of Domain Name <wellzfargo.com>
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wellzfargo.com>, registered with Arsys
Internet, S.L. d/b/a Nicline.com.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict
in serving as Panelist in
this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically November
8, 2004; the National Arbitration Forum
received a hard copy of the Complaint November
10, 2004.
On
November 9, 2004, Arsys Internet, S.L. d/b/a Nicline.com confirmed by e-mail to
the National Arbitration Forum that the domain
name <wellzfargo.com>
is registered with Arsys Internet, S.L. d/b/a Nicline.com and that a woman in
North Andover, Massachusetts was the “Registrant,” “Administrative” and “Technical” contact. Arsys Internet, S.L. d/b/a Nicline.com
verified that the true Respondent is bound by the Arsys Internet, S.L. d/b/a
Nicline.com registration
agreement and thereby has agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain
Name Dispute Resolution Policy (the "Policy"). Complainant alleges that “The WHOIS
information for <wellzfargo.com> lists the name, address and phone
number of a real person who is not the registrant of the domain name but whose
identify was appropriated
by the true registrant (“Respondent”), for the
purpose of concealing the Respondent’s true identity.” Complainant listed “John Doe” as the
Respondent seeking to reach this unknown person or entity. This matter is addressed in the Findings
below.
On
November 17, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 7, 2004, 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@wellzfargo.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 17, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Carolyn Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <wellzfargo.com>, is confusingly similar to
Complainant’s WELLS FARGO mark.
2. Respondent has no rights to or legitimate
interests in the <wellzfargo.com> domain name.
3. Respondent registered and used the <wellzfargo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Arbitrator first addresses the procedural issue
of identity of the Respondent.
UDRP
Rule 3(b)(v) requires Complainant to provide the following in a Complaint:
…the name of the Respondent (domain-name
holder) and all information (including any postal and e-mail addresses and
telephone and
telefax numbers) known to Complainant regarding how to contact
Respondent or any representative of Respondent, including contact
information
based on pre-complaint dealings, in sufficient detail to allow the Provider to
send the complaint as described in Paragraph
2(a).
Complainant identified Respondent as
“John Doe,” despite the WHOIS information listing the domain name registrant’s
name as a woman
living in Massachusetts.
Complainant explained that its rationale for this action was based on
the belief that the named registrant of the domain name is an
innocent victim
of identify theft whose name was used by the true domain name registrant to
conceal its own identity. Complainant
argued that using the woman’s name, address, or phone number in both the
caption and the decision of this proceeding would
compound injury already done
to her.
Complainant further noted that the Rules
define a Respondent as “the holder of a domain-name registration against which
a complaint
is initiated.” UDRP Rule
1. Complainant argued that the Panel
should find that a “holder” of a domain name registration is not limited to the
WHOIS record.
The Panel finds
that the Policy and Rules anticipate that the “holder” of a domain name
registration will be the individual or entity
listed in the WHOIS
information. Further, fundamental due
process expected in any dispute, legal or otherwise, requires prior notice and
an opportunity to participate
in proceedings that adjudicate, arbitrate, or
otherwise judge an individual’s rights or interests. The UDRP recognizes this important principle in Rule 2(a), which
is cited in the aforementioned Rule 3(b)(v), and requires service
providers [in
this case the Forum] to employ “reasonably available means calculated to
achieve actual notice to Respondent.”
The Panel has found that the Forum complied with this section of the
Policy and Rules.
However, in
order to achieve actual notice a provider must obtain accurate information from
the registrant of a domain name. The
most reliable source available in obtaining accurate addresses of domain name
registrants is in the actual domain name registration
information given to the
respective registrars. This source is a
compiled database commonly known as the WHOIS information. See Trustees of the Trust Number SR-1 v.
Turnberry, Scotland Golf and Leisure, FA 122224 (Nat. Arb. Forum Nov. 3,
2002) (“The register maintained by an ICANN registrar must provide accurate
information as to
the identity of domain registrants. The human person or other
legal entity shown as the registrant must be assumed to be such by
third
parties seeking to ascertain a registrant’s identity by such means as a Whois
search.”).
Further, the
actual domain name registrant is contractually bound by the Policy, which is
incorporated by reference into registration
agreements and sets forth the terms
and conditions in connection with a dispute between the domain name registrant
and a third party. See Policy ¶ 1. In registering a domain name, the registrant
is representing and warranting that the statements made in the registration
agreement
are both complete and accurate.
See Policy ¶ 2. In this manner,
a domain name registrant is responsible for its ability to be notified in the
case of a potential dispute that arises.
The UDRP explicitly relies on such information, as evidenced by UDRP
Rule 2(a), which commands Service Providers to send the Complaint
to the
mailing addresses listed in the WHOIS information to achieve actual
notice.
Simply because a
domain name registrant may have used false or misleading information
intentionally in providing data for the WHOIS
information does not impose an
obligation upon arbitrators and/or service providers to perform complex
investigations to determine
a “true” domain name registrant and its
address. That burden lies with domain
name registrants. A Panel’s primary
objective is to “decide a complaint concerning a domain-name registration.” UDRP Rules ¶ 1. A Service Provider’s responsibility is to provide “a
dispute-resolution service.” UDRP Rules
¶ 1. The Panel finds nothing in the
Policy or Rules that designates panels and/or Service Providers as being
responsible for conducting
complex investigations to determine the identity of
a true domain name registrant.
Furthermore,
UDRP Rule 10(c) commands the Panel to ensure that “the administrative
proceeding takes place with due expedition.”
The Panel finds
that the Respondent listed in both the caption and decision should be the
individual or entity listed in the WHOIS
information. This holding, the Panel finds, furthers the contemplated goal of
Rule 10(c) by advancing the economical considerations that support
the
fundamental purpose of the Policy.
However, under the facts of this case, to protect the named Registrant’s
future rights to privacy, it is proper to identify her as
“John Doe as
Holder of Domain Name <wellzfargo.com>.”
In reaching this result, the Arbitrator considered Complainant’s concern
that further publicizing information about the name of the
woman who lives in
Massachusetts and her address, and phone number in the caption would make her
vulnerable to further identity theft.
The Arbitrator was not persuaded by that argument. Complainant submitted
Exhibit D, which demonstrated that a search of a well-known
online directory
service revealed at <superpages.com> that the woman’s name, address, and
phone number had already been exposed.
Further, that search contains an optional link for interested Internet
users that even provides driving directions to her home. This data suggests that the name, address
and phone number were in the public domain and because such information was in
the public
domain prior to the disputed domain name being registered, the
alleged unscrupulous third party would have been able to obtain the
information
to perpetrate its alleged fraud.
Therefore, nothing in the ruling in this case will put her in a position
that is different from that existing before this dispute.
The Panel also considered Complainant’s argument that including her
actual name in the caption might lead the uninformed to align
her name with the
“acts that Respondent appears to have sought to impute to her.” Complaint at 4. The Arbitrator was persuaded by this argument. The best evidence
before the Arbitrator permits findings that she is the named Registrant,
Administrative and Technical contact for the disputed domain name and the
dispute may be resolved using her as the Respondent. However, Complainant’s evidence also supports findings that she
was not the actual person who registered the disputed domain name
in Spanish
and held it passively thereafter.
Complainant did not show that she had engaged in any fraud upon this Complainant
by the registration and in fact argued her position
that she had not acted
fraudulently.
The Panel finds that Complainant made a good faith effort to follow
proper procedure in filing the Complaint under the name John Doe. Complainant (1) had evidence that the named
Registrant was an innocent party whose identity had been stolen and who had
been subjected
to a fraud also perpetuated against the Complainant, and (2) had
been unable to find evidence about the actual registrant due to
the actual registrant’s
false concealments. The Panel finds
that Complainant should have proceeded under the actual name of the Registrant
obtained from the WHOIS information
and then petitioned the Arbitrator to keep
her name confidential by using John Doe as a pseudonym. But to require a re-filing to accomplish
that result is not necessary. The
actual Registrant contracted under the Policy to comply with it and uphold it,
and the actual Registrant made the decision to
identify the woman in
Massachusetts as the Registrant, Administrative and Technical contact for the
domain name. It is therefore
appropriate to resolve this domain name dispute using the named
Registrant. Due to her future privacy
concerns, it is also appropriate to identify her as “John Doe as Holder of
Domain Name <wellzfargo.com>. To hold
otherwise would leave those who are victims of abuse to no recourse under the
Policy and Rules. The actual Registrant
contracted to follow and comply with the Policy and Rules and failed to do so. See Policy ¶ 1, 2 and 2(a).
Complainant
established with extrinsic proof in this proceeding that it owns rights in the
WELLS FARGO mark as the result of Complainant’s
numerous registrations with
both U.S. and foreign authorities (e.g. Reg. No. 779,187). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the registration of a mark is prima facie evidence of validity, creating a presumption that is
rebuttable that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see
also Am. Online, Inc. v. Thomas P.
Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the United States Patent and Trademark Office
creates a presumption of
rights in a mark).
Respondent did not file a
response in this proceeding. No
Respondent asserted rights to or interests in the disputed domain name.
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
will draw such inferences as the Panel considers
appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 to 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.
A complainant
may establish rights in a mark pursuant to paragraph 4(a)(i) of the Policy
through registration of the mark with an
appropriate governmental
authority. In the instant case,
Complainant established with extrinsic proof in this proceeding that it has
rights in the WELLS FARGO mark as
the result of Complainant’s numerous
registrations with both U.S. and foreign authorities (e.g. Reg. No.
779,187). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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
presumption); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
A domain name that
incorporates a third-party’s mark, and that is phonetically identical to that
mark, has been found to be confusingly
similar, pursuant to paragraph 4(a)(i)
of the Policy. In the instant case, the
disputed domain name <wellzfargo.com> incorporates Complainant’s
WELLS FARGO mark, but has merely changed the letter “s” to the letter “z”. The Panel finds that the difference in sound
between such letters does not distinguish the disputed domain name from the
mark and
therefore, the disputed domain name is confusingly similar to the mark
because it is phonetically confusing. See Hewlett-Packard Co. v.
Cupcake City, FA 93562
(Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies
¶ 4(a)(i) of the
Policy); see also Pfizer Inc. v. Phizer's
Antiques & Phizer,
D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain
name phonetically equivalent and confusingly similar to the
PFIZER
mark).
Therefore, the Panel finds
that Complainant established ICANN Policy
¶ 4(a)(i) requiring a showing of “confusing
similarity.”
Complainant
established in this proceeding that it has rights to and legitimate interests
in the mark contained in its entirety within
the disputed domain name. Respondent has not asserted any rights or
legitimate interests in the domain name.
Therefore, the Panel presumes that Respondent lacks rights and
legitimate interests in the domain name.
See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no
legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
The Panel also
finds that the evidence suggests that Respondent is not and could not be
commonly known by the disputed domain name
pursuant to Policy ¶ 4(c)(ii). The WHOIS registration information does not
contain any information that would suggest that Respondent is commonly known by
the name. See 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); see also Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“[N]othing 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).
The disputed domain name is not being used and Respondent has proffered
no evidence to suggest preparations to use the name. Therefore, the Panel finds that Respondent is passively holding
the domain name, which does not evidence rights to or legitimate interests
in
the name pursuant to paragraphs 4(c)(i) and (iii) of the Policy. See Flor-Jon Films, Inc. v.
Larson, FA 94974 (Nat.
Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the
site demonstrates a lack of legitimate
interests in the domain name); see
also Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent
made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice
of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name);
see also Pharmacia
& Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no
rights or legitimate interests where Respondent failed to submit a Response to
the Complaint
and had made no use of the domain name in question).
Moreover, the
Panel finds that Respondent engaged in the practice of typosquatting by
registering a domain name that incorporates
a nearly identical version of Complainant’s
protected mark with the intention of redirecting consumers to an alternative
website. Typosquatting permits the
finding that Respondent has no rights to or legitimate interests in the
disputed domain name. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting as a
means of redirecting consumers against their will to another site, does not
qualify as a bona fide offering of goods or services, whatever may be the goods
or services offered at that site.”); see also IndyMac Bank
F.S.B. v. Ebeyer, FA 175292 (WIPO
Sept. 19, 2003) (finding that Respondent lacked rights and legitimate interests
in the disputed domain names because
it "engaged in the practice of
typosquatting by taking advantage of Internet users who attempt to access
Complainant's <indymac.com>
website but mistakenly misspell Complainant's
mark by typing the letter 'x' instead of the letter 'c.'"); see also LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com> and <ltdcommodaties.com> disputed domain
names were typosquatted versions
of Complainant's LTD COMMODITIES mark and
"Respondent's 'typosquatting' is evidence that Respondent lacks rights or
legitimate
interests in the disputed domain names.").
Therefore, the
Panel finds that Complainant established the provision of ICANN Policy ¶ 4(a)(ii), requiring a showing of “no rights or legitimate interests.”
Complainant
alleged that Respondent acted fraudulently and in bad faith. Passive holding of a domain name has been
found in previous cases to be evidence of bad faith registration and use
pursuant to Policy
¶ 4(a)(iii). In the
instant case, Respondent failed to develop an active website and has not
demonstrated any preparations to the use the domain
name. Therefore, the Panel finds that Respondent
has passively held the domain name in bad faith. See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that merely holding an infringing domain name without active use
can constitute use in
bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that Respondent made no use of the domain name or website that
connects with the
domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by the Respondent to amount
to the domain name
being used in bad faith”).
Moreover, the
Panel found that Respondent typosquatted in creating a domain name that was
phonetically identical to Complainant’s
protected mark. The Panel finds that this conduct supports
findings that Respondent registered and used the disputed domain name in bad
faith pursuant
to Policy ¶ 4(a)(iii). See 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 Zone
Labs, Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) ("Typosquatting, itself is evidence of bad
faith registration and use pursuant to
Policy ¶ 4(a)(iii)."); see also Dermalogica,
Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the
<dermatalogica.com> domain name was a typosquatted version of
Complainant's DERMALOGICA mark and
stating, "[t]yposquatting itself is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii).");
see also K.R.
USA, Inc. v. So So Domains, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names were typosquatted versions of
Complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks.
"Furthermore, [pursuant to Policy ¶ 4(a)(iii)] the very practice of
typosquatting,
in which Respondent has engaged, has been deemed behavior in bad
faith.").
The Panel finds
that Complainant met the requirements of ICANN Policy ¶ 4(a)(iii) to show “bad faith registration and use.”
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wellzfargo.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 30, 2004
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