WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
and
ADMINISTRATIVE PANEL PROVISIONAL ORDER
Wachovia Corporation v. American Consumers First
Case No. D2004-0150
1.The Parties
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.
2.The Domain Names and Registrar
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.
3.Procedural History
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.
4.Factual Background
According to the uncontested statements in the Complainant, Wachovia Corporation has been using the WACHOVIA trademark since 1879 and has 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 (30) federal trademark registrations with at least 15 additional applications pending before the USPTO [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.
5.Parties’ Contentions
A.Complainant
The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.
B.Respondent
The Respondent did not reply to the Complainant’s contentions.
- Discussion and Findings
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 right or legitimate interest in respect of the Domain Name; and
(iii)The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
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 variations in letters – through misspelling or mistyping – is likely to occur.
In many “typoquatting” cases the issue has been the omission of a letter or period. See Dow Jones & Co. v. Zuccarini d/b/a Cupbcake Patrol, WIPO Case No. D2001-0302 [<wallsteetjournal> confusingly similar to WALL STREET JOURNAL]; CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0743 (June 18, 2003) [<wwwamctv.com> confusingly similar to and AMC TV mark]; Time WarnerEntertainment v. Zuccarini, 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 & Co. v. Zuccarini d/b/a Cupbcake Patrol, supra [<wallstreetjounral.com> and <wallstreetjouranl>]; In still other cases, the Respondent/defendant has added an “s” or similar, grammatically correct variation on the trademark. See Shields v. Zuccarini, 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, 142 F.3d 1127, 1131 (9th Cir. 1998). But despite “the wide propensity for misspelling” In re Dial-A-Mattress Operating Corp., 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.
1.Confusing Similarity through Mistyping
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.
2.Confusing Similarity through Misspelling
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 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 consumer in the United States might be uncertain of the vowel sound at the end of WACHOVIA.
3.Insufficient Evidence of Confusing Similarity
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 confusingly similar to the trademark CISCO? Is confusingly similar to NOKIA? One or two letter variation from a well-known trademark does not automatically produce a confusingly similar domain name. See Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260 (May 24, 2003) (“aberzombie” not shown to be confusingly similar to “Abercrombie”); See also Express Scripts v. Roy Duke, 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, the Panel concludes that pursuant to UDRP Rule 15(a), the Complainant may wish to establish confusing similarity of these domain names to the WACHOVIA trademarks under principles of American trademark law between parties.
Provision for Complainant to provide such additional material is set out below.
B.Rights or Legitimate Interests
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 ( and established that the respondent has no U.S. 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 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.
C.Registered and Used in Bad Faith
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 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 Rule 4(b)(iv). 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 Respondents prior practices of stockpiling domain names that are minor variations in established trademarks. BellSouth Intellectual Property Corporation v. American Consumers First, WIPO Case No. D2003-0290; Popular Enterprise, LLC v. American Consumers First, WIPO Case No. D2003-0742. 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.
7.Decision
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>
8.Provisional Order
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, as ascertained for all the domain names in the Complaint, the three domain names are confusingly similar to the Complainant’s Trade Marks.
The Complainant shall submit its response no later than ______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 ______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 ______, 2004.
In the event of 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.
Justin Hughes
Sole Panelist
Date: May 27, 2004
DECISION FORMATTING AND
FORWARDING GUIDELINES
Forwarding Procedures: Sole Panelist
1.Forward a draft of the decision by e-mail to for a format check by the case manager. The transmittal e-mail message should clearly indicate that the version being sent is a draft;
2.The case manager will return the decision fully formatted;
3.Download and printout the final version;
4.After verifying the text of the decision, confirm to the case manager by return e-mail that the decision is being formally submitted for notification to the parties;
5.Send a signed and dated version of the decision to +41 22 740 3700 by fax;
6.Send four signed originals of the decision to the Center.
Forwarding Procedures: Three-Member Panel
1.The Presiding Panelist should forward a draft of the decision by e-mail to for a format check by the case manager. The transmittal e-mail message should clearly indicate that the version being sent is the final draft reflecting the views of all three panelists;
2.The case manager will send the fully formatted decision to each of the panelists by e-mail;
3.Each panelist should download and printout the final version;
4.After verifying the text of the decision, the co-panelists should confirm their assent to the Presiding Panelist;
5.The Presiding Panelist should confirm to the case manager by e-mail that the decision is being formally submitted by the Administrative Panel for notification to the parties;
6.Each panelist should separately send a signed and dated version of the decision to +41 22 740 3700 by fax;
7.The Presiding Panelist should send four originals of the decision, dated and signed by each panelist, to the Center.
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