Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2011001921462
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webstetbank.com>, registered with GoDaddy.com, LLC.
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 November 20, 2020; the Forum received payment on November 20, 2020.
On November 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <webstetbank.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@webstetbank.com. Also, on November 25, 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 December 18, 2020, 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 offers a wide range of banking and financial services, including online banking, checking account, and mortgage loan services. Complainant has rights in the WEBSTER BANK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,012,979 registered November 8, 2005). Respondent’s <webstetbank.com> domain name is confusingly similar to Complainant’s WEBSTER BANK mark. Respondent incorporates the mark in its entirety and adds the letter “t” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <webstetbank.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name attempts to download malware or redirect internet users to unrelated sites to disrupt Complainant’s business. Respondent engages in the practice of typosquatting by intentionally misspelling the word “Webster.”
Respondent registered and used the <webstetbank.com> domain name in bad faith as Respondent’s domain name attempts to download malware or redirect users to sites unrelated to Complainant to disrupt Complainant’s business. Respondent engages in typosquatting by misspelling the word “Webster.” Lastly, Respondent had actual knowledge of Complainant’s rights in the WEBSTER BANK due to the long-standing use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation and Webster Bank (Complainant) of Waterbury, CT, USA. Complainant is the owner of numerous domestic and international registrations for the mark WEBSTER BANK and numerous variations thereof constituting the family of Webster Financial and Webster Bank marks. Complainant has continuously used its marks since at least as early as 2003 in connection with its provision of banking, insurance, trust, and investment services. Complainant is also the owner of a multitude of domain name registrations incorporating its registered marks including <websterbank.com>.
Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (Respondent), of Panama City, Panama. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <webstetbank.com> domain name was registered on or about January 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 claims to have rights in the WEBSTER BANK mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the WEBSTER BANK mark (e.g., Reg. No. 3,012,979 registered November 8, 2005). The Panel here finds that Complainant has rights in the WEBSTER BANK mark per Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <webstetbank.com> domain name is confusingly similar to Complainant’s WEBSTER BANK mark. Registration of a domain name that contains a mark in its entirety that adds an additional letter along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank’). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the letter “t” along with the “.com” gTLD. The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i) as the domain name is nearly identical to Complainant’s mark, merely substituting a “t” for the “r” and adding a gTLD.
Respondent raises no contentions regarding 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 argues Respondent lacks rights or legitimate interest in the <webstetbank.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the WEBSTER BANK mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information for the disputed domain name indicates the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico” and there is no evidence to suggest that Respondent was authorized to use the WEBSTER BANK mark or was commonly known by the disputed domain name. Th Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name attempts to download malware or redirect internet users to unrelated sites in an attempt to disrupt Complainant’s business. Use of a disputed domain name to resolve to a webpage that attempts to download malware or redirect internet users is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Syed Hussain / IBN7 Media Group, FA 1721384 (Forum Apr. 26, 2017) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Here, Complainant has provided screenshots of Respondent’s <webstetbank.com> domain name that shows content unrelated to Complainant’s business. The Panel here finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant additionally argues that Respondent engages in the practice of typosquatting by intentionally misspelling the word “Webster.” A respondent that engages in the practice of typosquatting by misspelling a complainant’s mark is evidence that respondent lacks rights or legitimate interests per policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, Complainant argues that Respondent adds an additional ‘T’ to its WEBSTER BANK mark to create a misspelling of the mark. The Panel here finds that Respondent engaged in the practice of typosquatting per Policy ¶ 4(a)(ii).
Respondent raises no contentions regarding Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and used the <webstetbank.com> domain name in bad faith as Respondent’s domain name attempts to download malware or redirect users to sites unrelated to Complainant in an attempt to disrupt Complainant’s business. Use of a disputed domain name to redirect internet users to unrelated webpages may be evidence of bad faith per Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Here, Complainant has provided screenshots of Respondent’s <webstetbank.com> domain name that shows content unrelated to Complainant’s business. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant argues that Respondent engages in typosquatting by misspelling the word “Webster.” A respondent engages in the practice of typosquatting by creating a misspelling of complainant’s mark in an at-issue domain name which may be evidence of bad faith per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Here, Complainant asserts that Respondent adds an additional ‘T’ to its WEBSTER BANK mark to create a misspelling of the mark. The Panel here finds that Respondent engaged in typosquatting which supports a finding of bad faith registration and use per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had knowledge of Complainant’s rights in the WEBSTER BANK mark at the time of registering the <webstetbank.com> domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. The Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions regarding Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the applicable ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <webstetbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 4, 2021
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