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Wachovia Corporation v. Organized Crime, Inc.

WIPO Case No. D2002-0362

Outcome
Transfer
Domain names
firstunioncredit.com
Complainant
Wachovia Corporation
Respondent
Organized Crime, Inc.
Panelist
Abel
Registrar
Innerwise, Inc. d/b/a ItsYourDomain.com ("Innerwise"), 1005 W. Wise Road, Second Floor, Schaumburg, Illinois 60193, United States of America
Decided
08 Jul 2002
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0362.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Wachovia

Corporation v. Organized Crime, Inc.

Case

No. D2002-0362

1. The Parties

Complainant is Wachovia

Corporation, formerly First Union Corporation, a North Carolina corporation

with its principal place of business in Charlotte, North Carolina, United States

of America ("Complainant").

Respondent, is Organized

Crime, Inc., status and structure unknown, with an address in Henderson, Nevada,

United States of America ("Respondent").

2. The Domain Name

and Registrar

The domain name at issue

is <firstunioncredit.com>, registered with Innerwise, Inc. d/b/a ItsYourDomain.com

("Innerwise"), 1005 W. Wise Road, Second Floor, Schaumburg, Illinois

60193, United States of America.

3. Procedural History

The WIPO Arbitration and

Mediation Center ("the Center") received the Complaint by e-mail on

April 17, 2002, and in hard copy form on April 22, 2002. The Center verified

that the Complaint satisfies the formal requirements of the ICANN 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"). The formal date of the commencement of this Administrative

Proceeding is April 23, 2002.

On April 22, 2002, Innerwise

confirmed by e-mail to the Center that <firstunioncredit.com> is registered

with Innerwise and that Respondent is the current registrant of the domain name.

On April 23, 2002, the

Center transmitted the Notification of Complaint and Commencement of Administrative

Proceeding, together with a copy of the Complaint, via overnight courier, e-mail

and facsimile to the addresses and numbers Respondent provided in its registration.

The Center also used the additional e-mail addresses provided by the Complainant

as possible ways to reach Respondent. The Center advised, inter alia, that the

response was due by May 13, 2002. According to the courier tracking information,

the package was delivered to Henderson, Nevada and signed for by an "R.

Elkins" on April 25, 2002. The Center’s e-mail to the Administrative

Contact Respondent had provided to Innerwise, <helen@sentbyemail.com>

-- was responded to by "ME" at <info@sentbyemail.com> on April

23, 2002 with the following: "This company is not known to us? Organized

Crime, Inc.? There must be some error?" Neither of the addressees at the

additional e-mail addresses submitted by Complainant responded, and the facsimile

number Respondent provided was not in service.

On April 23, 2002, Complainant

notified the Center via e-mail that it had been unsuccessful in reaching Respondent

at the address indicated in the WHOIS listing: the package Complainant had mailed

to Respondent on April 17, 2002, containing a copy of the complaint, had been

returned to Complainant by the postal service marked "Return to Sender:

Attempted – Not Known".

On May 16, 2002, having

received no Response or other communication from Respondent, the Center e-mailed

a Notification of Respondent Default to both parties, using the aforementioned

e-mail addresses to reach Respondent. On May 29, 2002, the Center issued a Notification

of Appointment of Administrative Panel and Projected Decision Date of June 12,

2002 to both parties. This Notification informed the parties that, pursuant

to Complainant’s request to have the dispute decided by a single-member panel,

the Center had appointed Sally M. Abel as sole panelist. The decision date was

subsequently extended to June 19, 2002.

Having reviewed the communication

records in the case file, the Administrative Panel ("the Panel") finds

that the Center has discharged its responsibility under Paragraph 2(a) of the

Rules "[t]o employ reasonably available means calculated to achieve actual

notice to Respondent." Therefore, the Panel shall issue its Decision based

on the Complaint, the Policy, the Rules, and the Supplemental Rules, without

the benefit of any Response from Respondent.

4. Factual Background

Complainant, a holding

company with numerous subsidiaries, is one of the largest financial institutions

in the United States with a customer base of over sixteen million (16,000,000)

customers. Through its subsidiaries, Complainant has used a family of FIRST

UNION service marks in connection with banking and financial services since

1958. Complainant owns twenty-three (23) United States federal and twenty-five

(25) state service marks in the U.S. for FIRST UNION for various financial services,

as indicated in Annex 4 to the Complaint. Complainant has invested and continues

to invest significant money and effort in advertising, promoting, and marketing

its various banking, financial, investment, credit and insurance services using

its FIRST UNION marks. Complainant alleges that it has achieved substantial

consumer recognition and goodwill in FIRST UNION by virtue of Complainant’s

extensive and continuous use of FIRST UNION as a mark for over forty (40) years.

Complainant further promotes

its services by operating a full-service web site on the Internet where consumers

may obtain information about Complainant’s services and perform on-line transactions.

The web site is linked to several Internet domain names including, but not limited

to <firstunion.com>. Additionally, Complainant uses the domains <firstunioncreditcard.com>

and <firstunioncreditcards.com> to promote bank card services under the

FIRST UNION mark.

On February 16, 2002, Respondent

obtained the domain name <firstunioncredit.com>, as indicated in the WHOIS

registration record in Annex 1 to the Complaint. There has never been any relationship

between Complainant and Respondent. <firstunioncredit.com> connects to

<temptationsatwork.com>, an escort service or, as stated on the web site,

a "brand new form of global staffing agency, a mix of traditional Secretarial

and I.T. temping agency with Escorts, Hosts, Translators creating our famous

‘SEXETARIES.’" As found in Annex 5 to the Complaint, this web site contains

several photographs of women in short skirts and ends with the statement "discreetly

mixing pleasure with business". From the meta-tag headers on the page,

these services apparently are available in London, Las Vegas, New York, Los

Angeles, and Salt Lake City. The web site also includes the statement "You

have arrived here as a result of third party advertising."

On March 13, 2002, Complainant

made efforts to locate Respondent through the Nevada Secretary of State’s Office,

the Nevada Clark County Business License Office, and the City of Las Vegas Business

License Office. Complainant reports that none of these offices had any record

of a company named "Organized Crime, Inc." Complainant also attempted

telephone contact with Respondent, but found Respondent’s telephone number,

which begins with a Utah area code, non-operational.

5. Parties’ Contentions

A. Complainant

Complainant asserts:

(1) that Respondent’s

domain, <firstunioncredit.com>, is confusingly similar to Complainant’s

FIRST UNION service mark(s);

(2) that Respondent

has no rights or legitimate interest in respect of the domain name because:

Respondent is not licensed or otherwise authorized to use Complainant’s family

of FIRST UNION marks; Respondent’s use of <firstunioncredit.com> is not

in connection with a "bona fide" offering of goods or services, but

with "illicit, if not illegal" services offered at the <temptationsatwork.com>

web site; Respondent’s marketing of services under a domain name formed by adding

a descriptive term to another party’s famous trademark is not a "bona fide"

offering; Respondent has never been known by the disputed domain and, in fact,

Respondent’s true identity is unknown.

(3) that Respondent

registered and is using the domain in bad faith because: Respondent is making

illegitimate commercial use of <firstunioncredit.com> intentionally diverting

consumers who seek Complainant’s financial services by creating a likelihood

of consumer confusion for material gain; Respondent is tarnishing the FIRST

UNION marks by associating the domain with escort services; and Respondent fraudulently

concealed its true identity and contact information in obtaining the domain

name.

Complainant seeks transfer

of the domain name.

B. Respondent

Respondent has not contested

the allegations of the Complaint.

6. Discussion and Findings

Respondent has defaulted.

Paragraph 14 of the Rules provides that in the event of a default, the Panel

shall proceed to a decision on the complaint, drawing such inferences as it

deems appropriate. Paragraph 15(a) of the Rules instructs the Panel to render

the decision on the basis of the statements and documents submitted, and the

Rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy

directs that Complainant must prove, each of the following:

(i) The domain name

is identical or confusingly similar to a mark in which Complainant has rights;

and

(ii) Respondent has

no rights or legitimate interests in respect of the domain name; and

(iii) The domain name

has been registered and is being used in bad faith.

The domain at issue is

identical or confusingly similar to Complainant’s FIRST UNION mark. The only

difference between FIRST UNION and the disputed domain is that Respondent has

added the generic word "credit," which Complainant also uses in connection

with FIRST UNION. The addition of such a generic term to a mark does not detract

from the identity or confusing similarity of the domain.

Respondent has no rights

or legitimate interest in the <firstunioncredit> domain.

The undisputed facts indicate

that Respondent intends to mislead consumers seeking information about FIRST

UNION financial services to the <temptationsatwork.com> escort service

web site. Creating a likelihood of confusion for the purpose of misleading consumers

to Respondent’s web site for commercial gain, in and of itself, establishes

bad faith registration and use of <firstunioncredit.com>. Complainant

has met its burden; Respondent, by its silence has affirmed Complainant’s allegations.

The Panel further notes

the results of her independent investigation of Complainant’s allegation that

Respondent has concealed its true identity. It appears that Respondent, Stealth

Commerce, Lost in Space, and a fourth entity named Telmex Management Services

all appear to be controlled by the same individual or individuals, who may or

may not be Helen Bradbury (Respondent’s Administrative Contact), Juan Miguel,

Mark Townsend, Marlies Bilham, or Antoinne Rousseau. This consortium of individuals

and seemingly non-existent entities appears to be engaged in a complex scheme

of obtaining domains based on others’ trademarks and linking them to web sites

advertising escort services.

7. Decision

Because the undisputed

evidence permits a finding in favor of Complainant on each element of its claim;

and there is no evidence to the contrary, the Panel decides that Complainant

has met its burden of proof with respect to each of the three elements of Paragraph

4(a) of the Policy:

(i) the domain name

is identical or confusingly similar to Complainant’s mark;

(ii) Respondent has

no rights or legitimate interests in respect of the domain name; and

(iii) the domain name

has been registered and is being used in bad faith.

Accordingly, the Panel

requires that the registration of the domain name at issue be transferred to

Complainant.

Sally M.

Abel

Sole Panelist

Dated: June

13, 2002

Footnotes:

1. Reviewing the WHOIS database, the Panel

finds a strong relationship between these registrants and contact identities.

<firstunioncredit.com> is registered to Organized Crime, Inc., administrative

contact Helen Bradbury of <helen@sentbyemail.com>. Complainant noted in

the Complaint that both the domain for this e-mail address, <sentbyemail.com>,

and <temptationsatwork.com> were registered to Stealth Commerce, asserting

that "The inclusion of these domain names in the WHOIS information for

the disputed domain name and on Respondent’s web site leads to the logical conclusion

that Stealth Commerce, not Organized Crime, Inc., is the actual registrant of

the disputed domain name." On June 10, 2002, while the instant

case was pending, the WHOIS record of the registrant of <sentbyemail.com>

and <temptationsatwork.com> changed to "Lost in Space" of Majorca,

Saudi Arabia, Administrative Contact Juan Miguel of <juanmiguel@siteviper.com>.

The WHOIS record for <siteviper.com> shows this domain registered to Respondent:

Organized Crime, Inc., Administrative Contact Helen Bradbury of <helen@sentbyemail.com>.

2. The Panel finds 12 prior relevant UDRP decisions:

Digital Channel Partners Ltd. V. Bilham Solutions and Marlies

Bilham, WIPO Case No. D2000-1246 (December 14, 2000) (transferring <dcpglobal.com>,

<dcp-global.com>, <dcp-labs.com>, <dcpeurope.com>, <dcpamericas.com>,

and <dcpasiapac.com>, all linking to "secretarial and escort services",

from the Respondents, citing associations with "Territer Bilham",

former Digital Channel Partners employee Mark Townsend and girlfriend Marlies

Bilham, and citing other domains held by Respondents <thehyatthotel.com>

and <harvey-jones.com>), available at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1246.html;

Nat’l Cable Satellite Corp. v. Telmex Mgmt.Servs., Nat’l Arb.

Forum Case No. FA0112000102820 (February 4, 2002) (transferring <cspantv.com>,

which linked to <girlhire.com>, from "Telemex"), available

at http://www.arb-forum.com/domains/decisions/102820.htm; Estee Lauder

Cosmetics Ltd.; Make-up Art Cosmetics, Inc. v. Telmex Mgmt. Servs.,

WIPO Case No. D2001-1428 (February 8, 2002) (transferring <macosmetics.com>,

which linked to "adult escort services", from "Telemex"

after a failed attempt to sell the domain to the mark holder for $2,000, and

citing other domains held by Respondent: <discountedcartier.com>, <theholidayinn.com>,

and <ahiltonhotel.com>), available at https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1428.html;

McCain Foods Ltd. v. Telmex Mgmt. Servs., WIPO Case No. D2001-1444

(February 25, 2002) (transferring <mccainfoods.com>, which linked to <girlhire.com>,

from "Telmex" contacts "Antoinne Rousseau" and "Helen

Bradbury"), available at https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1444.html;

Plymouth Sav. Bank v. Telmex Mgmt. Servs., WIPO Case No. D2001-1333

(February 27, 2002) (transferring <plymouthsavingsbank.com>, which linked

to <girlhire.com>, from "Telmex" contacts "Antoinne Rousseau"

and "Helen Bradbury", citing a relationship with <sentbyemail.com>

and noting Respondent’s attempt to sell the domain for $5,000), available

at https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1333.html;

Argyle Winery, Inc. v. Telmex Mgmt. Servs., Nat’l Arb. Forum Case

No. FA0202000104480 (March 4, 2002) (transferring <argylewines.com>, which

linked to <girlhire.com>, from "Telemex" and discussing Respondents

prior participation in UDRP action Digital Channel Partners Ltd., 5(c)(iii)),

available at http://www.arb-forum.com/domains/decisions/104480.htm; Six

Continents Hotels v. Telmex Mgmt. Servs., WIPO Case No. D2001-0996

(March 14, 2002) (transferring <theholidayinn.com>, <theinter-continental.com>,

and <thecrowneplaza.com>, which linked to "[S]ites offering adult hotel

and vacation packages, secretarial and escort services, and a travel, entertainment

and retail portal" from "Telemex"), available at https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0996.html;

Societe des Produits Nestle SA v. Telmex Mgmt., WIPO Case No.

D2002-0070 (April 2, 2002) (transferring <nestlefoods.com>, which linked

to "women who – according to the text on the website – offer their services

as ‘senior secretary and personal assistant’ .… however [semi-nude photos] suggest[

]… services ... of a sexual nature", from "Telemex"), available

at https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0070.html;

U.S. Franchise Sys. v. Telmex Mgmt. Servs., WIPO Case No

D2002-0099 (April 5, 2002) (transferring <hawthornsuites.com>, <hawthornsuitehotels.com>,

and <thehawthornsuites.com>, all of which linked to "pornographic

websites", from "Telemex" – holder of other domains <ahiltonhotel.com>,

<themarriotthotel.com>, <thehyatthotel.com>, <lasvegasmiragehotel.com>,

and <excaliburhotellasvegas.com>), available at https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0099.html;

Snapple Beverage Corp. v. Telmex Mgmt. Servs., WIPO Case No. D2002-0114

(April 22, 2002) (transferring <snapples.com>, linked to <temptationsatwork.com>,

after "Telemex" failed to sell the domain to the mark holder for $4,0000),

available at https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0114.html;

Rio Props., Inc. v. Stealth Commerce, Nat’l Arb. Forum

Case No. FA0203000105756 (April 22, 2002) (transferring <riohotellasvegas.com>,

which linked to "highly suggestive photographs of semi-nude and nude women

in various poses," from "Stealth Commerce" and "Respondent’s

alter ego Telmex" after a failed attempt to sell the domain to the mark

holder for , $4,0000), available at http://www.arb-forum.com/domains/decisions/105756.htm;

Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a.

Telmex Mgmt. Servs., Inc., WIPO Case No. D2002-0155 (April

24, 2002) (transferring <royalbankscotland.com>, linked to <girllhire.com>

and <temptationsatwork.com>, from "Telmex" contacts "Antoinne

Rosseau" and "Helen Bradbury" despite transfer of the domain

during proceedings to "Stealth Commerce" since the panel was "satisfied

that the alleged new party… is the same entity"), available at https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0155.html.

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