Wachovia Corporation v. American Consumers First [2004] GENDND 932 (7 July 2004)

The Complainant is Wachovia Corporation of Charlotte, North Carolina, United States of America, represented by Kennedy Covington Lobdell & Hickman, LLP of Charlotte, North Carolina, United States of America.

The Respondent is American Consumers First of Salt Lake City, Utah, United States of America.

The disputed domain names <qachovia.com>, <wachevia.com>, <wachovaa.com>, <wachovea.com>, <wachovii.com>, <wachovio.com>, <wachoviu.com>, <wachovua.com>, <wachpvia.com>, <wachuvia.com>, <wechovia.com>, <wschovia.com>, <wuchovia.com> are registered with Wild West Domains, Inc.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2004. On February 26, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On February 26, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the details for the administrative, billing, and technical contact. At the request of the Center, further clarification was provided on March 5, 2004. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 7, 2004.

The Center appointed Justin Hughes as the sole panelist in this matter on May 13, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

According to the uncontested statements in the Complaint, Wachovia Corporation has been using the WACHOVIA trademark since 1879, and has a United States trademark registration for the WACHOVIA mark dating at least as far back as December 30, 1969, [Complaint, Annex 3]. At present, the Complainant owns over thirty federal trademark registrations with at least fifteen additional applications pending before the United States Patent and Trademark Office [Complaint at 7 and Annex 3]. At least twenty of these federal trademark registrations were issued before the Respondent obtained the disputed domain names in July 2003. The Complainant is the fourth largest financial institution in the United States [Complaint at 6] and advertises its services, via the WACHOVIA mark, through print, radio, and television [Complaint at 7].

The Respondent registered all of the disputed domain names in late July 2003, [Complaint, Annex 1]. In addition to the disputed domain names, the Respondent maintains a series of domain names with web sites that provide search, referral, and/or advertising services, such as <luckypilot.com>, <seolabs.com>, and <picklerelish.com> [Complaint, Annex 5 and the Panel’s own research]. The Complaint alleges -- and the Panel is satisfied from its own research -- that the disputed domain names often default to one or more of the Respondent’s search, referral, and advertising sites.

The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.

To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must establish each of the following:

(i) The domain name at issue is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

Complainant reasons that Respondent’s domain names are “predictable typographical errors or confused spellings designed to lead Internet users who misspell or mistype Complainant’s mark to a web sites [sic] maintained by Respondent.” [Complaint at 9] The Complaint does not, however, discuss how each domain name is confusingly similar to the WACHOVIA mark, i.e. how each variation in letters – through misspelling or mistyping – is likely to occur.

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In many “typoquatting” cases the issue has been the omission of a letter or period. See Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302 (May 18, 2001) [<wallsteetjournal.com> confusingly similar to WALL STREET JOURNAL]; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (June 18, 2003) [<wwwamctv.com> confusingly similar to “www.amctv.com” and AMC TV mark]; Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184 (April 11, 2001) [<harypotter.com> and <scobydoo.com>]. In other situations, the transposition of two letters is the source of the confusion created by the respondent’s domain names. See Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, supra [<wallstreetjounral.com> and <wallstreetjouranl.com>]. In still other cases, the Respondent/defendant has added an “s” or similar, grammatically correct variation on the trademark. See Shields v. Zuccarini, [2001] USCA3 120; 254 F.3d 476 (3d Cir. 2001) [<joescartoons.com> and <joescartoon.com> confusingly similar to JOE CARTOON]. But the domain names in the present dispute do not involve the omission of a letter, the transposition of two letters, or a grammatically correct variation of WACHOVIA.

It may be that, as Judge Kozinski has noted, “[s]pelling is a lost art” when it comes to recognition of trademarks. Dreamwerks Prod. Group v. SKG Studio, [1998] USCA9 1004; 142 F.3d 1127, 1131 (9^th Cir. 1998). But despite “the wide propensity for misspelling” In re Dial-A-Mattress Operating Corp., [2001] USCAFED 39; 240 F.3d 1341 1348 (Fed. Cir. 2001), a Complaint should provide more guidance to the Panel on this account. Instead, the Panel must determine on its own whether each domain name is confusingly similar to Complainant’s trademark.

The Panel determines that <qachovia.com> is confusingly similar to WACHOVIA because on a standard QWERTY keyboard the letter “q” is next to the letter “w,” making “qachovia” a common mistyping.

The Panel similarly determines that <wachpvia.com> is confusingly similar to WACHOVIA because on a standard QWERTY keyboard the letter “p” is next to the letter “o,” making “wachpvia” a common mistyping.

The Panel also determines that <wschovia.com> is confusingly similar to WACHOVIA because on a standard QWERTY keyboard the letter “s” is next to the letter “a,” making “wschovia” a common mistyping.

The Panel determines that <wachevia.com>, <wachovea.com>, <wechovia.com>, <wachuvia.com>, <wachovua.com>, and <wuchovia.com> are all confusingly similar to WACHOVIA because each involves the substitution of an incorrect vowel for the correct vowel sequence in the word WACHOVIA. Because WACHOVIA is not a familiar word in English and because of the propensity of English-speakers to substitute a “schwa” sound for distinct vowel sounds (see http://www.onestopenglish.com/ProfessionalSupport/Tips/schwa.pdf; http://en.wikipedia.org/wiki/Schwa), consumers with low familiarity with the WACHOVIA mark are likely to misspell the mark in these ways.

The Panel extends the same analysis to <wachovio.com>, although confusion in this case depends on a consumer not clearly hearing the “a” sound at the end of the word. The sounds “ia,” “io,” and “eo” all commonly occur in commerce in the United States (i.e., BRIO software, TREO smartphones, ALTRIA, NOKIA, etc.). In addition, Spanish-speakers in the United States would commonly substitute “a” and “o” to distinguish between feminine and masculine variations of the same word (novio/novia, Latino/Latina). With an unfamiliar commercial term, both English- and Spanish-speaking consumers in the United States might be uncertain of the vowel sound at the end of WACHOVIA.

None of the reasons above apply obviously to <wachovaa.com>, <wachovii.com>, or <wachoviu.com>. The first two would require a typist to hit the same key twice – a mistake that may be considerably less common than hitting an adjacent, wrong key or failing to hit a key with sufficient force. The word <wachoviu> would be neither the result of any obvious mistyping nor an obvious misspelling.

Again, regarding the confusingly similarity of these thirteen domain names the Panel has worked without specific guidance from the Complainant. The Complaint essentially asks the Panel to embrace a per se rule that any one letter variation with a well-known trademark produces a confusingly similar sign.

The Panel declines to adopt such reasoning. Would <loke.com> (after the Norse god) or <poke.com> be confusingly similar to the trademark COKE? Is “www.cisca.com” confusingly similar to the trademark CISCO? Is “www.novia.com” confusingly similar to NOKIA? One or two letter variation from a well-known trademark does not automatically produce a confusingly similar domain name. See A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260 (May 24, 2003) (<aberzombie.com> not shown to be confusingly similar to “Abercrombie”). A Complaint should explain the basis for confusing similarity. See Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829 (February 26, 2004) (denying transfer of some domain names where “Complainant ha[d] not specifically explained why they are confusingly similar to its mark”).

For this reason, pursuant to Paragraph 4(b) of the Policy and Paragraph 3(b) of the Rules, the Panel invites the Complainant to substantiate why the three domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the Complainant’s Trade Marks. Because this is a dispute between two parties that are domiciliaries of the United States, pursuant to paragraph 15(a) of the Rules, the Complainant may wish to establish confusing similarity of these domain names to the WACHOVIA trademarks under principles of American trademark law.

The Complaint provides that “Respondent has no rights or legitimate interest in the disputed domain names” [Complaint at 10] then states:

“The Respondent is not licensed to use Complainant’s WACHOVIA mark or any other mark in Complainant’s family of WACHOVIA marks. Respondent is not a subsidiary of Complainant, nor is Respondent controlled by Complainant.” [Complaint at 10]

But the issue is not whether Respondent has any rights or legitimate interests in WACHOVIA. The issue is whether Respondent has any rights or legitimate interests in each domain name, i.e., does Respondent have a product or service called “qachovia.” Nonetheless, the Panel recognizes that in the absence of any filings from Respondent, the Complainant cannot be asked to prove a negative.

The Panel has researched the trademark databases at the United States Patent and Trademark Office (“www.uspto.gov”) and established that the Respondent has no United States trademark applications or registrations corresponding to any of the domain names. The Respondent’s business name does not correspond to any of the domain names.

At the time of this decision, the Panel found that several of the domain names defaulted to “www.picklerelish.com,” but several of the domain names were inactive. The redirection of Internet users from some of the domain names [Complaint at 8] to a rotating series of websites, none of which concern any “qachovia” or “wachovea” anything (such as a product, service, place, institution, or individual so named) does not constitute a legitimate commercial interest in the domain name. The Respondent does not appear to have used any of the domain names in any legitimate non-commercial way (such as a critical parody of WACHOVIA’s business practices).

Finally, paragraph 14(b) of the Rules provides that in the event of a default, “the Panel shall draw such inferences therefrom as it considers appropriate.” Pursuant to paragraph 14(b), the Panel considers Respondent’s default as a presumption against Respondent as to its rights or legitimate interests in the domain names.

On these grounds, the Panel concludes that the Respondent does not have any rights or legitimate interests in any of the disputed domain names.

Paragraph 4(b) of the Rules provides a set of circumstances that evince bad faith in the registration and use of domain names. Paragraph 4(b)(iv) provides that bad faith is shown where:

“by using the domain name, you [the Respondent]have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The four “circumstances” described in paragraph 4(b) are “in particular but without limitation.”

The Panel finds that bad faith is established in this dispute on three grounds. First, many of the domain names have been used and still presently resolve to “www.picklerelish.com,” a web site that advertises itself as “Click Find Anything” and offers among its popular searches the following listing:

“Finance”
“ Investing
“ Stocks
“ Credit Cards
“ Real Estate
“ Insurance
“ Loan“

This clearly constitutes use of the domain names in contravention of Paragraph 4(b)(iv) of the Rules. For example, in Société Air France v. Alvaro Collazo, WIPO Case No. D2003-0417 (July 22, 2003), the Respondent’s web site at a confusingly similar domain name “contain[ed] a number of hyperlinks to web sites offering inter alia travel services.” The Panel concluded that such links “clearly show[ed] that the domain name is used to attract for commercial gain Internet users to other on – line locations by creating a likelihood of confusion with the trademark AIR FRANCE.” The same reasoning applies squarely to the present dispute.

Second, bad faith in domain name registration is indicated by Respondent’s July 2003, action in registering a series of domain names that are variations on the established WACHOVIA mark in combination with Respondent’s prior practices of stockpiling domain names that are minor variations on established trademarks. See BellSouth Intellectual Property Corporation v. Nick West and American Consumers First, Inc., WIPO Case No. D2003-0290 (July 1, 2003); Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 (November 30, 2003). This pattern of trading on confusingly similar domain names constitutes bad faith. See also Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No, D2004-0214 (May 10, 2004) (bad faith registration pattern established by Respondent registering “1,100 domain names, many of them incorporating expressions that are confusingly similar to third parties’ marks, including several misspellings”).

Finally, Respondent’s default in this case only galvanizes the conclusion of bad faith in registration and use of the domain names. Pursuant to Rule 14(b), the Panel considers Respondent’s default as a presumption against Respondent on this issue.

On these three grounds, the Panel concludes that the Respondent has acted in bad faith in the registration and use of the disputed domain names.

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant:

<qachovia.com>;
<wachevia.com>;
<wachovea.com>;
<wachovio.com>;
<wachovua.com>;
<wachpvia.com>;
<wachuvia.com>;
<wechovia.com>;
<wschovia.com>;
<wuchovia.com>.

The Panel declines to order the transfer of the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> at this time.

Pursuant to paragraph 4(b) of the Policy and Paragraph 3(b) of the Rules, the Panel invites the Complainant to substantiate why these three domain names are confusingly similar to the Complainant’s Trade Marks.

The Complainant shall submit its response no later than June 24, 2004, at 12pm (midday) American Eastern Standard Time. The Complainant’s response shall be sent by e-mail and fax (+41 22 740 3700) to the WIPO Arbitration and Mediation Center and by e-mail and fax to the Respondent.

In the event of the Complainant submitting a statement in response to this order, the Respondent shall have until July 1, 2004, at 12pm (midday) American Eastern Standard Time, to submit a response, commenting on the Complainant’s submission.

In the event of the Complainant submitting a statement in response to this order, the due date for this decision shall be extended until July 7, 2004.

In the event the Complainant does not submit a statement in response to this order by the above date and time, the request to transfer the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> will be automatically denied. The registrar in this case is requested to maintain the registrar lock on the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> until it receives notice that this proceeding has been concluded. Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules the registrar may take action to implement the decision in relation to the first 10 domain names.

The Respondent is American Consumers First of Salt Lake City, Utah, United States of America.

The Center appointed Justin Hughes as the sole panelist in this matter on May 13, 2004. Finding that it was properly constituted, the Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On June 10, 2004, the Panel issued a Decision (“June 10 Decision”) ordering that ten (10) of the disputed domain names be transferred to the Complainant. These domain names were <qachovia.com>; <wachevia.com>; <wachovea.com>; <wachovio.com>; <wachovua.com>; <wachpvia.com>; <wachuvia.com>; <wechovia.com>; <wschovia.com>; and <wuchovia.com>. Pursuant to paragraph 4(b) of the Policy and paragraph 3(b) of the Rules, the June 10 Decision further invited the Complainant to substantiate why the three domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the Complainant’s trademarks. In the June 10 Decision the Panel requested that the registrar in this case maintain a registrar lock on the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> until it received notice that this proceeding has been concluded.

The June 10 Decision provided that the Complainant should submit its additional statement no later than June 24, 2004, and gave the Respondent until July 1, 2004, to submit a response, commenting on the Complainant’s submission. The Complainant provided a timely “Response to Provisional Order” (“Complainant’s Response”) to the Panel. The Respondent did not reply to the Complainant’s Response.

The relevant aspects of the factual background of this dispute are described in the June 10 Decision.

In response to the Panel’s invitation to elaborate on how the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the Complainant’s trademark(s), the Complainant submits that the “confusingly similar” element under the Policy should properly be analyzed with: (1) the same analysis used by prior panelists adjudicating “typosquatter” disputes; (2) the analysis in U.S. case law under the Anticybersquatting Consumer Protection Act as to when a domain name at issue is “identical or confusingly similar” to a plaintiff’s trademark; or (3) reasonable inferences from Respondent’s conduct, particularly Respondent’s past history of typosquatting and default in the present case. [Complainant’s Response at 2]

To prevail in a UDRP action, paragraph 4(a) of the Policy requires that the Complainant must establish each of the following:

(i) The domain name at issue is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

Because of the posture of these proceedings, the Panel will address the three requirements in reverse order as they concern the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names.

Pursuant to its June 10 Decision and the reasons given therein, the Panel has concluded that the Respondent registered and has used the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names in bad faith. Since June 10, 2004, these three domain names continue to resolve to “www.picklerelish.com”, a web site that offers among its popular searches a variety of options which compete with the financial services offered by the Complainant.

Pursuant to its June 10 Decision and the reasons given therein, the Panel has concluded that the Respondent has no rights or legitimate interests in concern the <wachovaa.com>, <wachovii.com>, and <wachoviu.com> domain names.

In its June 10 Decision, the Panel concluded that Complainant had not provided sufficient evidence or reasoning as to why the three domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> are confusingly similar to the WACHOVIA trademark. As the June 10 Decision noted, it would not be inappropriate to adopt a per se rule that any one or two letter variation in a trademark automatically produces a confusingly similar domain name. In the case of an eight letter trademark like WACHOVIA such a per se rule would automatically render over 400 possible domain names “confusingly similar.”

In Complainant’s Response, the Complainant submits that the “confusingly similar” element under the Policy should properly be analyzed with: (1) the same analysis used by prior panelists adjudicating “typosquatter” disputes; (2) the analysis in U.S. case law under the Anticybersquatting Consumer Protection Act as to when a domain name at issue is “identical or confusingly similar” to a plaintiff’s trademark; or (3) reasonable inferences from Respondent’s conduct, particularly Respondent’s past history of typosquatting and default in the present case. [Complainant’s Response at 2]

Not every one or two letter change from an established trademark is a minimal typographical error from that trademark. [June 10 Decision at 4]. The June 10 Decision reasoned that “doubling” errors are a kind of typographical “mistake that may be considerably less common than hitting an adjacent, wrong key or failing to hit a key with sufficient force” [Id. at 4]. On that basis, the June 10 Decision did not order the transfer of these domain names pending further briefing from the Complainant.

The Complainant’s Response now provides evidence that “doubling” of letters is a common typographical error. For example, attachment 1 to Complainant’s Response is an excerpt of a University of Copenhagen report detailing how “doubling: insertion of a letter X next to another X” is a common typographical error. Final Report of the Testbed Study of Evaluation Methodologies: Authoring Aids, 1997, available at “www.cst.dk/temaa/D16/d16exp-3.html”. Doubling of letters is apparently recognized as a common mistake in spell check software. See As-U-Type software website, available at “www.asutype.com/features.html”. See also “Keyboard errors,” NewScientist.com, available at “www.newscientist.com/lastword/article.jsp?id=lw249” (discussing prevalence of and explanations for “pre-empting of double letters”).

On this basis, the Panel accepts that the domain names < wachovaa.com> and <wachovii.com> are confusingly similar to the WACHOVIA trademark.

The remaining domain name in this dispute, <wachoviu.com> provides the most difficulty vis-à-vis the confusing similarity standard.

Complainant’s Response reasons that “wachoviu” can be a misspelling that occurs when a person unfamiliar with WACHOVIA types a “u” for the “uh” sound as in “up” and “ugly” [Complainant’s Response at 2]. The Complainant reasons that “[a] consumer hearing Complainant’s WACHOVIA mark could easily think that it is spelled with a final ‘u’ rather than a final ‘a’.” [Complainant’s Response at 3]

Complainant suggests that the standard for an “identical or confusingly similar” mark under the U.S. Anticybersquatting Consumer Protection Act (“ACPA”) can help inform what constitutes a “confusingly similar” domain name in the present dispute. [Complainant’s Response at 5]. The Panel agrees that, pursuant to paragraph 15(a) of the Rules, in a proceeding between two parties domiciled in the same country, it is appropriate to refer to that country’s national trademark law to establish suitable legal standards.

By the standards elaborated in American cases and treatises, the similarity between <wachoviu.com> and WACHOVIA is sufficiently strong to make the domain name “confusingly similar” to the Complainant’s trademark. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (2004), § 25.78 at 25:265-267 and § 23.21 at 23:75-76 (concluding that appearance, pronunciation, and “overall impression” are elements in determining similarity); Restatement, Torts § 729 (1938) (same); Restatement (Third) of Unfair Competition § 21(a) (1995) (same); Shields v. Zuccarini, [2001] USCA3 120; 254 F.3d 476, 483 (3d Cir. 2001) (a “strong similarity” between trademark and domain names persuaded appellate court that the domain names were “confusingly similar”).

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <wachovaa.com>, <wachovii.com>, and <wachoviu.com> be transferred to the Complainant.

Generic Top Level Domain Name (gTLD) Decisions

Wachovia Corporation v. American Consumers First [2004] GENDND 932 (7 July 2004)

World Intellectual Property Organization

World Intellectual Property Organization