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Wachovia Corporation v. Henry Chan [2004] GENDND 919 (12 July 2004)


National Arbitration Forum

DECISION

Wachovia Corporation v. Henry Chan

Claim Number:  FA0405000276057

PARTIES

Complainant is Wachovia Corporation (“Complainant”), represented by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman, LLP, 214 North Tryon Street, Hearst Tower, 47th Floor, Charlotte, NC 28202.  Respondent is Henry Chan  (“Respondent”), Post Office Box SS-6348/A124, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wachiva.com>, <wachoviabenefits.com>,

<wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 25, 2004; the Forum received a hard copy of the Complaint on May 26, 2004.

On May 26, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <wachiva.com>, <wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> 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 June 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 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@wachiva.com,postmaster@wachoviabenefits.com,postmaster@wachoviachecking.com,postmater@wachoviacreditcards.com,postmaster@wachovialogin.com,postmaster@wachoviamyaccount.com,postmaster@wachoviamyaccounts.com,postmaster@wachoviaonlineservices.com,postmaster@wachovic.com, postmaster@wachovica.com, postmaster@wachovivia.com, postmaster@wacoviacenter.com,postmaster@wacoviacreditcard.com,postmaster@wacoviasecurities.com,postmaster@wacoviasec.com,postmaster@whacovia.com, postmaster@wicovia.com, postmaster@wychovia.com, postmaster@hronlinewachovia.com and postmaster@onlineserviceswachovia.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 June 28, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Charles K. McCotter, Jr. (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 <wachiva.com>, <wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> domain names are confusingly similar to Complainant’s WACHOVIA mark.

2. Respondent does not have any rights or legitimate interests in the <wachiva.com>, <wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> domain names.

3. Respondent registered and used the <wachiva.com>, <wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> domain names in bad faith.

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

FINDINGS

Complainant, Wachovia Corporation, is a holding company that owns numerous subsidiary companies engaged, individually and collectively, in providing a wide variety of banking and financial services throughout the world. 

Complainant holds numerous registrations for the WACHOVIA mark with the United States Patent and Trademark Office (Reg. No. 883,529 issued December 30, 1969, Reg. No. 1,735,242 issued November 24, 1992, Reg. No. 1,729,833 issued November 3, 1992, Reg. No. 2,738,730 issued July 15, 2003, Reg. No. 2,805,546 issued January 13, 2004 and Reg. No. 2,744,626 issued July 29, 2003) in connection with banking and related financial services.  In addition, Complainant owns at least twenty-five other federal trademark registrations for its WACHOVIA family of marks.  Complainant’s WACHOVIA mark is also registered in Japan, Germany, Switzerland, Canada, the United Kingdom and the Cayman Islands.

Complainant and its predecessor companies have been using the WACHOVIA mark since Wachovia National Bank was created in 1879.  Since that time, Complainant et al. have expanded its use of the mark to include a wide variety of financial services.  Complainant is a major participant in the international banking community, including branches in Hong Kong, Tokyo, Taipei, Seoul and London.  Additionally, Complainant’s extensive global network includes thirty-three representative offices and over 3,000 correspondent banking relationships in more than 130 countries.

Complainant’s main website is operated at <wachovia.com>.

 

Respondent registered the disputed domain names between October 24, 2003 and April 12, 2004.  Respondent is using the domain names to redirect Internet users to the same website that features pop-up advertisements for a variety of services and hosts a search engine to link viewers to a variety of websites, predominantly including sites that involve financial services that directly compete with Complainant’s 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 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 that it has rights in the WACHOVIA mark through registrations with the United States Patent and Trademark Office and through continued use of its mark in commerce for the last 125 years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction.).

Respondent’s domain names are confusingly similar to Complainant’s WACHOVIA mark because the domain names consist of either Complainant’s mark with the mere addition of a generic or descriptive term, or are misspellings of the WACHOVIA mark, or they are a combination of both of the preceding.  The mere addition of a generic or descriptive term, the misspelling of a well-known mark, or some combination fail to differentiate sufficiently Respondent’s domain names from Complainant’s mark.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to Complainant’s mark BEANIE BABIES).   

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where 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”); see also 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist).

Respondent is using the disputed domain names to redirect Internet users to a website that features pop-up advertisements for an array of services and hosts a search engine to link viewers to a variety of websites, including sites that offer the same type of goods and services that Complainant offers online.  Respondent’s use of the domain names, which are confusingly similar to Complainant’s WACHOVIA mark, to redirect Internet users interested in Complainant’s products to a commercial website that links to financial-related websites and pop-up advertisements is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  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 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); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Moreover, Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by any of the domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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 Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain names that consist of either Complainant’s well-known mark with the mere additions of a generic or descriptive term, or are likely misspellings of the WACHOVIA mark, or a combination of both of the preceding and did so for Respondent’s commercial gain.  Respondent’s domain names divert Internet users seeking Complainant’s goods or services to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s WACHOVIA mark.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Khan, 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 Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

Respondent is using the disputed domain names to advertise a search engine and links to financial-related websites.  Complainant’s business provides banking and financial services to individuals and businesses throughout the world.  The Panel finds that, by creating confusion around Complainant’s WACHOVIA mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of domain names confusingly similar to Complainant’s mark to sell services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that Respondent registered and used the domain name <eebay.com> in bad faith where Respondent has used the domain name to promote competing auction sites); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

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

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 <wachiva.com>, <wachoviabenefits.com>, <wachoviachecking.com>, <wachoviacreditcards.com>, <wachovialogin.com>, <wachoviamyaccount.com>, <wachoviamyaccounts.com>, <wachoviaonlineservices.com>, <wachovic.com>, <wachovica.com>, <wachovivia.com>, <wacoviacenter.com>, <wacoviacreditcard.com>, <wacoviasecurities.com>, <wacoviasec.com>, <whacovia.com>, <wicovia.com>, <wychovia.com>, <hronlinewachovia.com> and <onlineserviceswachovia.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  July 12, 2004


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