Webster Financial Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2101001929755
Complainant is Webster Financial Corporation ("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 <nyhsabank.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2021; the Forum received payment on January 26, 2021.
On January 27, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <nyhsabank.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 January 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nyhsabank.com. Also on January 28, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 February 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a Delaware corporation headquartered in Connecticut. HSA Bank, headquartered in Wisconsin and providing services throughout the United States, is a division of a subsidiary of Complainant. Complainant and a predecessor in interest have used the HSA BANK mark continuously since at least as early as 2003. HSA Bank has $8.5 billion in total footings and is one of the largest administrators of health savings accounts in the United States. Complainant owns longstanding U.S. trademark registrations for HSA BANK in standard character form and related marks.
Respondent registered the disputed domain name <nyhsabank.com> via a privacy registration service in July 2020. The domain name is being used for a website consisting of a list of pay-per-click links to sites offering services that compete directly with those offered by Complainant. Complainant states that Respondent has not been authorized to use Complainant's mark and is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <nyhsabank.com> is confusingly similar to its HSA BANK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <nyhsabank.com> incorporates Complainant's registered HSA BANK trademark, omitting the space and adding the geographic abbreviation "NY" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., State Farm Mutual Automobile Insurance Co. v. THIS DOMAIN MAY BE FOR SALE AT HTTPS://WWW.NETWORKSOLUTIONS.COM / New Ventures Services, Corp, FA 1907647 (Forum Sept. 9, 2020) (finding <nystatefarm.com> confusingly similar to STATE FARM); AMERIGROUP Corp. v. Rui Zhang, FA 1460387 (Forum Oct. 9, 2012) (finding <nyamerigroup.com> confusingly similar to AMERIGROUP); Align Technology, Inc. v. 100Marketers, D2009-0799 (WIPO July 30, 2009) (finding <nyinvisalignorthodontist.com> confusingly similar to INVISALIGN); Bank of America Corp. v. Ehrenkranz Assoc., FA 1262257 (Forum June 29, 2009) (finding nybankofamerica.com> confusingly similar to BANK OF AMERICA); Ticketmaster Corp. v. Bill Hicks, D2004-0400 (WIPO July 13, 2004) (finding <nyticketmaster.com> confusingly similar to TICKETMASTER).
The Panel acknowledges that in a previous proceeding involving the same parties, the panel declined to find a similar domain name to be confusingly similar to the HSA BANK mark, apparently on the grounds that Complainant failed to explain how the letters "SC" prepended to the mark would be read or understood. See Webster Financial Corp. v. Carolina Rodrigues / Privacy Services Ltd., FA 1780560 (Forum May 8, 2018) (declining to find <schsabank.com> confusingly similar to HSA BANK). In the present case, however, Complainant contends that "NY" is internationally recognized as the abbreviation for the State of New York and thus is unlikely to distinguish the domain name from Complainant's mark. The Panel is also mindful of other decisions involving Respondent's registration of other domain names incorporating Complainant's HSA BANK mark, Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1859363 (Forum Oct. 3, 2019) (finding <hsabnak.com>, <hsabsnk.com>, and <myshsabank.com> confusingly similar to HSA BANK); Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1816249 (Forum Dec. 9, 2018) (finding <hsaabank.com> confusingly similar to HSA BANK); Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798297 (Forum Aug. 29, 2018) (finding <wwwmyhsabank.com> confusingly similar to HSA BANK), and at least one decision finding domain names combining HSA BANK with other geographic terms to be confusingly similar to the mark, Webster Financial Corp. v. Bank of Cashton, FA 1350481 (Forum Nov. 16, 2010) (finding <minnesotahsabank.com> and <wisconsinhsabank.com> confusingly similar to HSA BANK). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to display pay-per-click links to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1816249, supra (finding lack of rights or interests in similar circumstances); Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798297, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's mark, and is using the domain name to display links to direct competitors of Complainant, presumably for Respondent's commercial gain. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1816249, supra (finding bad faith registration and use in similar circumstances); Webster Financial Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798297, supra (same). The Panel notes additionally that Respondent has been a party to at least the four decisions cited above involving the same trademark — all of which were decided long before Respondent's registration of the domain name that is the subject of this proceeding — and that Respondent has a long history of bad faith domain name registrations and adverse decisions under the Policy, see HRB Innovations, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1880758 (Forum Feb. 28, 2020). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyhsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 22, 2021
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