Webster Financial Corporation and Webster Bank, National Association v. Zhichao Yang
Claim Number: FA2112001978840
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webstwronline.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2021; the Forum received payment on December 30, 2021.
On December 30, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <webstwronline.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. 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 January 5, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of January 25, 2022 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@webstwronline.com. Also on January 5, 2022, the Chinese and English language 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 January 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest Respondent is conversant and proficient in the English language. Thus, the Panel decides that the proceeding should be in English.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants: Webster Financial Corporation and Webster Bank, National Association. The former is a wholly- owned subsidiary of the latter. The Forum’s Supplemental Rule 1(e) permits multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). Because the record shows that such a relationship exists between the foregoing two entities, the Panel will allow both Complainants to proceed in this case and they shall collectively be referred to as “Complainant.”
A. Complainant
1. Webster Financial Corporation is a federally-charted national bank and wholly-owned subsidiary of Webster Bank, National Association, and provides business and consumer banking services. Complainant maintains registration in its WEBSTERONLINE.COM mark with the United States Patent and Trademark Office (USPTO).
2. The <webstwronline.com>[i] domain name is identical or confusingly similar to Complainant’s WEBSTERONLINE.COM mark because it misspells a portion of Complainant’s mark, with the “.com” generic top-level domain (“gTLD”).
3. Respondent does not have any rights or legitimate interests in the <webstwronline.com> domain name because Respondent is not commonly known by the domain name.
4. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because the resolving website displays links related to, and in competition with, Complainant’s business, by redirecting users to Complainant’s competitors.
5. Respondent’s website appears to phish for the personal user account information.
6. Respondent registered and uses the <webstwronline.com> domain name in bad faith because Respondent displays links that are related to, and compete with, Complainant’s business.
7. Respondent makes use of a privacy service to conceal its identity.
8. Respondent acted with actual or constructive knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WEBSTERONLINE.COM mark. Respondent’s domain name is confusingly similar to Complainant’s WEBSTERONLINE.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <webstwronline.com> domain name and that Respondent registered and uses the domain name 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 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 has rights in the WEBSTERONLINE.COM mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy Compl. Ex. 1. Therefore, the Panel holds that Complainant has rights in the WEBSTERONLINE.COM mark under Policy ¶ 4(a)(i).
Complainant argues that the <webstwronline.com> domain name is identical or confusingly similar to Complainant’s WEBSTERONLINE.COM mark because it misspells Complainant’s mark, while using the “.com” gTLD. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite misspellings in Complainant’s mark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”). Complainant’s mark is misspelled because the domain name replaces the second letter “e” found in the term “WEBSTER” adding in a second letter “w”. Therefore, the <webstwronline.com> domain name is identical or confusingly similar to Complainant’s WEBSTERONLINE.COM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the WEBSTERONLINE.COM domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent does not have rights or legitimate interests in the <webstwronline.com> domain name because Respondent is not commonly known by the domain name. Where a respondent does not provide evidence to the contrary, evidence of a respondent not being commonly known by a domain name, under Policy ¶ 4(c)(ii), may be found where identifying WHOIS information is unrelated to a domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS information lists the registrant as “Zhichao Yang”. Therefore, the Respondent is not commonly known by the <webstwronline.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the <webstwronline.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because Respondent’s domain name lists hyperlinks that are related to, and compete with, Complainant’s business. Use of a domain name incorporating a complainant’s mark to display competing hyperlinks that compete with a complainant’s business is evidence that a domain name is not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). The record show that the resolving website displays links related to Complainant’s business such as “login”, “customer service” and “Webster Online.” The uncontradicted evidence is that these links when clicked, resolve to websites that compete with Complainant or are unrelated to Complainant. Therefore, the Panel holds that Respondent is not using the <webstwronline.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and uses the <webstwronline.com> domain name in bad faith because Respondent’s website advertises hyperlinks that compete with Complainant’s business. Evidence of bad faith may be found, under Policy ¶¶ 4(b)(iii) and (iv), where a respondent’s domain name resolves to a website that displays links that are related to, and compete with, a complainant’s business. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The resolving website displays links that are related to services Complainant provides. However, when clicked on, users are redirected to websites that either compete directly with Complainant or are unrelated to Complainant. Therefore, the Panel holds that Respondent registered and uses the <webstwronline.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent acted with actual knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark because of Respondent’s use of a slightly misspelled version of Complainant’s mark. The Panel agrees and holds that Respondent registered the <webstwronline.com> domain name in bad faith under Policy ¶ 4(a)(iii). 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); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
The Panel finds Complainant has satisfied 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 <webstwronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 7, 2022
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