Webster Financial Corporation and Webster Bank, National Association v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2008001909982
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterbakn.com>, registered with Media Elite Holdings Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 26, 2020; the Forum received payment on August 26, 2020.
On August 27, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <websterbakn.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 August 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2020 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@websterbakn.com.
Also on August 28, 2020, 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 September 22, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity”.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel notes that in the present case, Webster Bank, National Association is a federally chartered national bank and a wholly-owned subsidiary of Webster Financial Corporation. The Panel therefore accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and the Complainants will be collectively hereafter be referred to as “Complainant.”
A. Complainant
The Complainant offer a range of financial and banking services. Complainant has rights in the WEBSTER BANK trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,012,979, registered on November 8, 2005). Respondent’s <websterbakn.com> domain name is confusingly similar to Complainant’s WEBSTER BANK trademark because it incorporates the entire trademark, merely misspelling the term “bank” and adding the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <websterbakn.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WEBSTER BANK trademark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users to various websites, including those that download malware on user’s devices, for commercial gain.
Respondent registered and uses the <websterbakn.com> domain name in bad faith. Respondent diverts Internet users to various websites for commercial gain and also confuses users as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website.
Additionally, Respondent engages in typosquatting which is itself evidence of bad faith. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the WEBSTER BANK trademark based on Respondent’s use of the entire trademark in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of U.S. trademark registrations for WEBSTER, WEBSTER BANK and trademarks built on WEBSTER / WEBSTER BANK, including but not limited to:
No. 3,409,243 WEBSTERONLINE.COM (word), registered April 8, 2008 for services in class 36;
No. 3,334,639 WEBSTER (word), registered November 13, 2007 for services in class 36;
No. 3,334,640 WEBSTER (word), registered November 13, 2007 for services in class 35;
No. 2,310,657 WEBSTER BANK (fig), registered January 25, 2000 for services in class 36;
No. 3,012,979 WEBSTER BANK (word), registered November 8, 2005 for services in class 36;
No. 5,832,172 WEBSTERBANK (word), registered August 13, 2019 for goods in class 9; and
No. 5,947,373 WEBSTERBANK (word), registered December 31, 2019 for services in class 35.
The disputed domain name was registered on July 17, 2020.
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”).
Complainant asserts rights in the WEBSTER BANK trademark based on registration with the USPTO (e.g., Reg. No. 3,012,979, registered on November 8, 2005). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. 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).”). Since Complainant provides evidence of registration of the WEBSTER BANK trademarks with the USPTO, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <websterbakn.com> domain name is confusingly similar to Complainant’s WEBSTER BANK trademark because it incorporates the entire trademark and merely misspells the term “bank” and adds the “.com” gTLD. Under Policy ¶ 4(a)(i), the misspelling of a trademark and addition of a gTLD are insufficient to distinguish a domain name from that trademark. See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.). Thus, the Panel finds that the disputed domain name is confusingly similar to the WEBSTER BANK trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <websterbakn.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WEBSTER BANK trademark.
When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a trademark constitutes further showing that a respondent lacks rights in a trademark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Here, the WHOIS information lists the privacy service “Domain Administrator / Fundacion Privacy Services LTD” as the registrant and no information suggests that Complainant is authorized Respondent to use the WEBSTER BANK trademark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to divert Internet users to various websites for commercial gain, some of which download malware on user’s devices. Use of a disputed domain name to divert Internet users for commercial gain and confuse users as to the affiliation and source of Respondent’s website does indeed not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of one of the websites that the disputed domain name resolves to that prompts Internet users to download malware and Complainant contends that Respondent receives some commercial gain from the diversion of users. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent uses the <websterbakn.com> domain name in bad faith because, as noted above, Respondent diverts Internet users to various websites, including those that prompt users to download malware, for commercial gain and thereby also confuses users as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website. The use of a disputed domain name to divert Internet users for commercial gain and confuse consumers is clear evidence of bad faith under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
As noted above, Complainant provides a screenshot of one of the resolving webpages for the disputed domain that prompts user to download malware from which Respondent presumably receives some commercial gain. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complainant argues that Respondent engages in typosquatting which itself is evidence of bad faith registration and use. Per Policy ¶ 4(a)(iii), when a respondent purposely misspelling a trademark a respondent engages in typosquatting which is itself evidence of bad faith. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“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 or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). In this case, the Complainant contend that by misspelling the term “bank” as “bakn” in the <websterbakn.com> domain name Respondent purposely engaged in typosquatting to take advantage of Internet users who mistype Complainant’s WEBSTER BANK trademark. Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Furthermore, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the WEBSTER BANK trademark. Per Policy ¶ 4(a)(iii), although constructive notice is not sufficient to support a bad faith finding, actual knowledge may be found based on the use made of the mark. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith).
In the present case, Complainant argues that Respondent had knowledge of Complainant’s rights in the WEBSTER BANK trademark because Respondent incorporated the entire trademark in the disputed domain name. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the trademark, and the Panel finds bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <websterbakn.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: September 28, 2020
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