Webster Financial Corporation v. Lee Black
Claim Number: FA1904001837841
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Lee Black (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hhsabank.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2019; the Forum received payment on April 8, 2019.
On April 10, 2019, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <hhsabank.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hhsabank.com. Also on April 15, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds approximately $22 billion in assets, and provides business and consumer banking, mortgage, insurance, trust, investment and other financial services. Complainant has rights in the HSA BANK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,161,483, registered Oct. 24, 2006). Respondent’s <hhsabank.com> domain name is identical or confusingly similar to Complainant’s mark as it adds an additional letter “h” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <hhsabank.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name contains links to other sites requiring users to download software that is arguably malware.
Respondent registered and uses the <hhsabank.com> domain name in bad faith. Respondent disrupts Complainant’s business by intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HSA BANK mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website. Further, when users select the links on the website, they are redirected to other sites requiring them to download software, which is presumably malware. Additionally, Respondent registered a domain name incorporating a common misspelling of Complainant’s HSA BANK mark. Moreover, Respondent registered the domain name using a privacy service to shield its identity. Finally, Respondent had actual or constructive knowledge of Complainant’s HSA BANK mark given the reputation associated with the mark and Respondent’s registration of an almost identical domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation (“Complainant”), of Waterbury, CT, USA. Complainant is the owner of the domestic registration for the mark HSA BANK, and variations thereof, which it has continuously used since at least as early as 2003, in connection with its provision of various financial and banking goods and services in both real and cyber space.
Respondent is identified as Lee Black (“Respondent”), of Osaka, Japan. The Panel notes that Respondent registered the <hhsabank.com> domain name on or about February 24, 2019.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. In support of its English language request, Complainant argues that Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language.
Pursuant to UDRP Rule 11(a), the Panel finds that Complainant has provided persuasive evidence to support the suggestion that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Complainant claims rights in the HSA BANK mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,161,483, registered Oct. 24, 2006). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the HSA BANK mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hhsabank.com> domain name is identical or confusingly similar to Complainant’s mark as it adds an additional letter “h” along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ and the gTLD ‘.com.’”). The Panel here finds that the <hhsabank.com> domain name is confusingly similar to the HSA BANK mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <hhsabank.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Lee Black” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. The Panel here finds that Respondent is not commonly known by the <hhsabank.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <hhsabank.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name merely contains links to other sites. Using a domain name to display links to third-party websites generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage, which displays the message “Security Check” and requires users to select a link confirming that they are human. The Panel here finds that Respondent’s use of the domain name to display a generic link to an unknown third-party fails to confer rights and legitimate interests in the domain name for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant argues that Respondent uses the domain name to distribute malware. Using a domain name in connection with malware can indicate a lack of rights and legitimate interests in a domain name under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Complainant argues that Respondent attempts to download malware onto users’ computers when they select the “I’M HUMAN” link on the resolving webpage. The Panel here finds that any use by Respondent of the domain name to distribute malware does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use under this Policy.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent disrupts Complainant’s business by intentionally attempting to divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HSA BANK mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website. Using a confusingly similar domain name to trade upon the goodwill of a complainant for commercial gain through the display of links can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of the resolving webpage, which displays the message “Security Check” and requires users to select a link confirming that they are human. The Panel here finds that Respondent attempts to disrupt Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant avers that Respondent registered a domain name incorporating a common misspelling of Complainant’s HSA BANK mark. This practice is known as typosquatting, which can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, the <hhsabank.com> domain name differs from the HSA BANK mark by the addition of the letter “h” at the beginning of the mark. The Panel here finds that Respondent’s changes of Complainant’s mark in the domain name further demonstrates Respondent’s registration and use of the disputed domain name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hhsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 21, 2019
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