national arbitration forum

DECISION

Wachovia Corporation v. Domain Deluxe

Claim Number:  FA0411000370869

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 Domain Deluxe (“Respondent”), 16/F Cheung Kong Center, 2 Queen Road Central, Hong Kong 1, GPO 7628, HK.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com>, registered with Domainpeople Inc., Enom, Inc. and The Registry at Info Avenue d/b/a IA Registry.

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 electronically on November 23, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2004.

On November 23, 2004, Domainpeople Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <wachavia.com> is registered with Domainpeople Inc. and that Respondent is the current registrant of the name. Domainpeople Inc. has verified that Respondent is bound by the Domainpeople 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 November 23, 2004, The Registry at Info Avenue d/b/a IA Registry confirmed by e-mail to the National Arbitration Forum that the domain name <wachocia.com> is registered with The Registry at Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry at Info Avenue d/b/a IA Registry has verified that Respondent is bound by the The Registry at Info Avenue d/b/a IA Registry 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 November 23, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <wachoiva.com> and <wachobia.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 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@wachavia.com, postmaster@wachobia.com, postmaster@wachocia.com and postmaster@wachoiva.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 22, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.

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 <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com> domain names are confusingly similar to Complainant’s WACHOVIA mark.

2. Respondent does not have any rights or legitimate interests in the <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com> domain names.

3. Respondent registered and used the <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com> domain names in bad faith.

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

C.  Complainant filed an additional submission stating that Respondent sent Complainant an email expressing a willingness to transfer the domain names.  However, in a subsequent email, Respondent refused to agree to Complainant’s conditions that it refrain from future Policy violations with respect to domain names similar to Complainant’s mark.

FINDINGS

Complainant, Wachovia Corporation, is a holding company owning numerous subsidiary companies engaged individually and collectively in providing a wide variety of banking and financial services throughout the world.  Complainant has been using the WACHOVIA name and mark since 1879, when Wachovia National Bank was created.

Complainant has multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the WACHOVIA mark (Reg. Nos. 883,529 issued December 30, 1969; 1,735,242 issued November 24, 1992; 1,729,833 issued November 3, 1992; 2,738,730 issued July 15, 2003; 2,805,546 issued January 13, 2004 and 2,744,626 issued July 29, 2003).  Complainant has also registered the WACHOVIA mark in various countries throughout the world, including Hong Kong (Reg. No. 12536/2003 issued July 22, 2002), Respondent’s purported home country.

Respondent registered the <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com> domain names on various dates between December 17, 2001 and December 4, 2003.  Each of the domain names resolves to a website operated by Respondent that advertises and links to banking and financial services of Complainant’s competitors.

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 WACHOVIA mark through registration with the USPTO and through continuous use of the mark in commerce since 1879.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that 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 assumption.).

Respondent’s domain names are confusingly similar to Complainant’s WACHOVIA mark.  The domain names incorporate Complainant’s mark in its entirety and make slight typographical alterations.  Respondent’s <wachavia.com> domain name replaces the letter “o” in Complainant’s mark with the letter “a.”  Respondent’s <wachobia.com> and <wachocia.com> domain names merely replace the letter “v” in Complainant’s mark with the letters “b” and “c” respectively.  Additionally, Respondent’s <wachoiva.com> domain name simply transposes the letters “v” and “i” in Complainant’s mark.  Such minor changes are not enough to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the domain name <belken.com> confusingly similar to Complainant's BELKIN mark because the name merely exchanged the letter “i” in Complainant's mark with the letter “e”); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding the disputed domain name was a simple misspelling of Complainant’s mark and was a classic example of typosquatting, which “renders the domain name confusingly similar to the altered famous mark”).

Furthermore, the Panel finds that the mere addition of the generic top-level domain “.com” is insufficient to negate the confusing similarity between Respondent’s domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).

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

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain names.  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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain names.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s WACHOVIA mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the 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 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 mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Moreover, a registrant’s use of a domain name, which is confusingly similar to a third-party mark, to market goods or services that directly compete with those offered by the third party under its mark has been found to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  Respondent’s domain names resolve to a website that advertises and links to competing banking and financial services.  Thus, Respondent’s use of domain names confusingly similar to Complainant’s mark 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[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”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

Furthermore, the fact that Respondent’s domain names are merely typosquatted variations of Complainant’s mark tends to prove that Respondent lacks any rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  See Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also 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.”).

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

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain names confusingly similar to Complainant’s mark and using them to market competing banking and financial services.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000)  (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also 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).

Furthermore, Respondent is capitalizing on the goodwill of the WACHOVIA mark by using the disputed domain names to divert Internet users to a website that advertises and links to Complainant’s competitors.  The Panel infers that Respondent receives click-through fees for redirecting Internet users to these competing websites.  Since the disputed domain names contain confusingly similar versions of Complainant’s mark, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting website.  Therefore, Respondent’s opportunistic use of the disputed domain names represents bad faith registration and use under 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Moreover, the fact that Respondent’s domain names are merely typosquatted variations of Complainant’s mark is itself evidence of Respondent’s bad faith registration and use 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 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 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 <wachavia.com>, <wachobia.com>, <wachocia.com> and <wachoiva.com> domain names be TRANSFERRED from Respondent to Complainant.

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

Dated:  January 5, 2005

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