Webster Financial Corporation v. Li Hou Chang
Claim Number: FA1908001860218
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Li Hou Chang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hsababk.com> and <hsanank.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2019; the Forum received payment on August 30, 2019.
On September 2, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <hsababk.com> and <hsanank.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 September 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@hsababk.com, postmaster@hsanank.com. Also on September 9, 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 October 1, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that Complainant requests that this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement and the assumption that the language will therefore be Chinese. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Having considered those matters and the applicable rules regarding the proceedings of the UDRP, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstance of the present case, the Panel decides that the proceeding should be in the English language.
A. Complainant
Complainant made the following contentions.
Complainant
is a Delaware corporate headquartered in Waterbury, Connecticut and currently
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 trademark registrations
with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg.
No. 3,161,483, registered Oct. 24, 2006). See Compl. Ex. 1. Respondent’s
<hsababk.com> and <hsanank.com> domain names are
confusingly similar to Complainant’s HSA BANK mark as each incorporates the mark
in its entirety, merely misspelling the term “bank”
in the mark (“b” to a “n,” and “n” to a “b”), while adding a “.com” generic
top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <hsababk.com> and <hsanank.com> domain names. Respondent is not authorized to use Complainant’s HSA BANK mark or commonly known by either of the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to feature links for website that offer services which directly compete with Complainant’s business.
Respondent registered and uses the <hsababk.com> and <hsanank.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain names’ resolving websites which feature competing, pay-per-click hyperlinks. Furthermore, Respondent has engaged in typosquatting when it registered the disputed domain names. Respondent also registered the domain names under a privacy service. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the HSA BANK mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides business and consumer banking, mortgage, insurance, trust, investment and other financial services.
2. Complainant has established its trademark rights in the HSA BANK mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,161,483, registered Oct. 24, 2006).
3. Respondent registered the <hsababk.com> and <hsanank.com> domain names on February 25, 2019.
4. Respondent uses the disputed domain names to feature links for a website that offers services which directly compete with Complainant’s business.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the HSA BANK mark based upon registration of the mark with the USPTO (e.g., Reg. No. 3,161,483, registered Oct. 24, 2006). See Compl. Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the HSA BANK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s HSA BANK mark. Complainant next argues Respondent’s <hsababk.com> and <hsanank.com> domain names are confusingly similar to the HSA BANK mark, as the name incorporates a misspelled version of the mark along with a “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The Panel therefore determines the <hsababk.com> and <hsanank.com> domain names are confusingly similar to the HSA BANK mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HSA BANK trademark and to use it in its domain names, incorporating the mark in its entirety, and merely misspelling the term “bank” that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <hsababk.com> and <hsanank.com> domain names on February 25, 2019;
(c) Respondent uses the disputed domain names to feature links for a website that offers services which directly compete with Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <hsababk.com> and <hsanank.com> domain names, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HSA BANK mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Osama Raman, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Li Hou Chang,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <hsababk.com> and <hsanank.com> domain names;
(f) Complainant argues Respondent’s lack of rights or legitimate interests in the <hsababk.com> and <hsanank.com> domain names is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). 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 contends the domain names resolve to a website displaying only pay-per-click links, some of which send users to competitor’s websites. See Amend. Compl. Ex. 8. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <hsababk.com> and <hsanank.com> domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s bad faith is indicated by its use of the <hsababk.com> and <hsanank.com> domain names to link to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain names resolve to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. See Amend. Compl. Ex. 8. The Panels therefore finds that Respondent has registered and used the domain names in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant further contends that Respondent’s bad faith is further demonstrated by its typosquatted registrations of the <hsababk.com> and <hsanank.com> domain names. Typosquatting may be found to be per se bad faith registration under a Policy ¶ 4(a)(iii) analysis. See Twitter, Inc. v. Domain Admin, FA1503001607451 (Forum Apr. 2, 2015) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark when searching for the mark’s associated products or services. In doing so the wayward Internet users are directed to a web presence controlled by the domain name’s registrant where their accidental visits may be exploited. Here, Respondent simply changes a single letter in Complainant’s trademark before incorporating the mark into the at-issue domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith.”). The Panel recalls that Complainant claims that the disputed domain names incorporate the HSA BANK mark, but Respondent merely misspells the term “bank” in both instances. The Panel therefore finds that Respondent’s registration of the disputed domain names constitutes bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant's HSA BANK mark, it is inconceivable that Respondent could have registered the <hsababk.com> and <hsanank.com> domain names without actual or constructive knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice are generally unsuccessful, however, because prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further contends that Respondent’s registration of the domain names, which contain misspelled versions of the HSA BANK mark, demonstrates Respondent’s knowledge of Complainant’s rights in the mark. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the domain names in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the HSA BANK mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hsababk.com> and <hsanank.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 2, 2019
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