Webster Financial Corporation and Webster Bank, National Association v. Brent Webster
Claim Number: FA2203001989747
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Brent Webster (“Respondent”), represented by Roberto Ledesma of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterprivatewealth.com>, registered with NameCheap, Inc..
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Bruce E. Meyerson (Ret.), Diane Thilly Cabell as Panelists, and David P. Miranda, as Chair.
Complainant submitted a Complaint to the Forum electronically on March 25, 2022; the Forum received payment on March 25, 2022.
On March 25, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <websterprivatewealth.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 March 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@websterprivatewealth.com. Also on March 28, 2022, 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.
A timely Response was received and determined to be complete on April 18, 2022.
Additional Submissions were received on April 27, 2022 and May 2, 2022, and were considered by the panel.
On April 27, 2022, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Bruce E. Meyerson (Ret.), Diane Thilly Cabell as Panelists, and David P. Miranda, as Chair.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
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.”
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association. Webster Bank, National Association is a federally-chartered national bank and a wholly-owned subsidiary of Webster Financial Corporation.
Supplemental Rule 1(e) allows 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.
The Complaint is sufficient to establish a sufficient nexus or link between the Complainants, to treat them all as a single entity in this proceeding.
A. Complainant
Complainant provides business and consumer banking, mortgage lending, financial planning, trust, and investment services. Complainant has rights in the WEBSTER, WEBSTER PRIVATE BANK, and WEBSTER WEALTH ADVISORS marks (hereinafter “the WEBSTER marks”) based on registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., WEBSTER - Reg. No. 3,334,639, registered Nov. 13, 2007; WEBSTER PRIVATE BANK - Reg. No. 4,398,719, registered Sep. 10, 2013; WEBSTER WEALTH ADVISORS - Reg. No. 4,740,050, registered May 19, 2015). Complainant contends Respondent’s <websterprivatewealth.com> domain name is confusingly similar to Complainant’s WEBSTER marks as it merely adds the terms “private” and “wealth” and the “.com” generic top level domain (“gTLD”) to the WEBSTER mark.
Respondent does not have rights and legitimate interests in the <websterprivatewealth.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WEBSTER marks. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent hosts competitive hyperlinks on the resolving website for the domain.
Respondent registered and uses the <websterprivatewealth.com> domain name in bad faith. Respondent uses the disputed domain name to host competing hyperlinks. Additionally, Respondent’s use of a privacy service indicates bad faith. Furthermore, Respondent had constructive and actual knowledge of Complainant’s rights in the WEBSTER marks based on the incorporation of the entire WEBSTER mark in the disputed domain name.
B. Respondent
Respondent, Brent Webster, is an individual and certified Financial Planner and certified Private Wealth Advisor. Respondent does not dispute that the <websterprivatewealth.com> domain name is confusingly similar to Complainant’s WEBSTER marks.
Respondent asserts rights and legitimate interests in the <websterprivatewealth.com> domain name. The <websterprivatewealth.com> domain name corresponds with Respondent’s surname and occupation. Additionally, Respondent intends to use the disputed domain name for bona fide business purposes. Furthermore, Respondent’s use of the WEBSTER name to market financial advisory services since 1989 predates Complainant’s WEBSTER marks.
The <websterprivatewealth.com> domain name was registered on December 23, 2020. Respondent did not register or use the <websterprivatewealth.com> domain name in bad faith. The disputed domain name reflects Respondent’s surname. Additionally, the hyperlinks on the resolving webpage for the domain are auto-generated by the registrar. Respondent’s use of the WEBSTER name in connection with the offering of financial services also predates Complainant’s rights in the WEBSTER marks. Furthermore, Respondent was unaware of Complainant’s rights in the WEBSTER mark when registering the domain. Finally, Respondent argues Complainant engages in reverse domain name hijacking.
Complainant, having established first element finding the domain confusingly similar, has failed to establish that Respondent has no rights or legitimate interest with respect to the domain, or that said domain was registered and is being used in bad faith by the Respondent, and thus has failed to establish all necessary elements of its Complaint under the UDRP Policy.
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.
Complainant asserts rights in the WEBSTER marks based on registration of the marks with the USPTO (e.g., WEBSTER - Reg. No. 3,334,639, registered Nov. 13, 2007). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). Since Complainant provides evidence of registration of the WEBSTER marks with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <websterprivatewealth.com> domain name is confusingly similar to Complainant’s WEBSTER marks as it merely adds the terms “private” and “wealth” and the “.com” gTLD to the WEBSTER mark. The addition of terms and a gTLD to a mark does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Respondent makes no contentions with regards to Policy ¶ 4(a)(i). The Panel finds that the disputed domain name is confusingly similar to the WEBSTER marks under Policy ¶ 4(a)(i).
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”).
Complainant contends that Respondent does not have rights and legitimate interests in the <websterprivatewealth.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WEBSTER marks. WHOIS information can be used to show whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Here, the WHOIS registrar information lists “Brent Webster” as the registrant. Complainant contends that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent hosts competitive hyperlinks on the resolving website for the domain.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
Respondent asserts rights and legitimate interests in the <websterprivatewealth.com> domain name because the <websterprivatewealth.com> domain name corresponds with Respondent’s surname and occupation. A respondent may be found to be commonly known by a disputed domain name when the name reflects the respondent’s personal name. See G.A. Modefine S.A. v. Mani, D2001-0537 (WIPO July 20, 2001) (finding that a person who registers a variant of their full name has rights and legitimate interests in the domain name). Furthermore, evidence that a respondent has been doing business under the disputed domain name may also be evidence that the respondent is commonly known by the name. See Navigant Consulting, Inc. v. Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Here, Respondent’s surname is WEBSTER. The record contains evidence that Respondent has provided financial advisor services under the name WEBSTER since 1989, and has used the WEBSTER name in connection with those services. Therefore, the Panel finds that Respondent is commonly known by the disputed domain name.
Additionally, Respondent has provided support for its intent to use the disputed domain name for bona fide purposes. A respondent may be found to have rights and legitimate interests in a disputed domain name when a respondent has made demonstrable preparations to use the domain in connection with a bona fide offering of goods or services. See Jolt Co. v. Digital Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001). While the disputed domain name currently resolves to a parked page, Respondent has provided evidence of the use of the “Webster Private Wealth” name in connection with financial services.
Furthermore, Respondent argues, and the Panel agrees, Respondent has rights and legitimate interests in the <websterprivatewealth.com> domain name because Respondent’s use of the WEBSTER name to market financial advisory services since 1989 predates Complainant’s WEBSTER marks. Therefore, the Panel finds Respondent has rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <websterprivatewealth.com> domain name in bad faith because Respondent uses the disputed domain name to host competing hyperlinks. Additionally, Complainant argues Respondent’s use of a privacy service indicates bad faith. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007).
The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
Complainant has failed to establish Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).
Since the Panel finds that Respondent has rights or legitimate interests in the <websterprivatewealth.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
The Panel agrees that Respondent did not register or use the <websterprivatewealth.com> domain name in bad faith because the disputed domain name reflects Respondent’s surname. Under Policy ¶ 4(a)(iii), a finding that a respondent has rights and legitimate interests in a disputed domain name precludes a finding of bad faith. See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”).
The Panel agrees that Respondent has not used the disputed domain name in bad faith since the hyperlinks on the resolving webpage for the domain are auto-generated by the registrar. Panels have declined to find bad faith when a respondent did not know or want competing hyperlinks on a disputed domain name’s parked page. See Elec. Arts. Inc. v. Abstract Holdings Int’l LTD, FA 1415905 (Forum Jan. 4, 2012) (neglecting to find bad faith registration and use because the panel determined that the respondent did not want, or know about, the competing hyperlinks found on the resolving website); see also Ansell Ltd. v. Kovar, FA 1421538 (Forum Feb. 1, 2012) (finding that the respondent did not register or use the disputed domain name in bad faith because the respondent only parked the domain name while it prepared its website and that the respondent did not commercially benefit from the parking).
Respondent’s use of the WEBSTER name in connection with the offering of financial services predates Complainant’s rights in the WEBSTER marks. Respondent contends that it was unaware of Complainant’s rights in the WEBSTER mark when registering the domain. Lack of evidence that a respondent had knowledge of a complainant’s rights in a mark precludes a finding of bad faith registration under Policy ¶ 4(a)(iii). See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith); see also It Takes 2 v. C.,J., FA 384923 (Forum Feb. 15, 2005) ("[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith."). Respondent asserts that it had never heard of Complainant or its marks until this proceeding and Respondent provides evidence that WEBSTER is an extremely common surname in the US. See Resp. Annex E. Therefore, as nothing in the record contradicts Respondent’s assertions, the Panel finds Respondent did not register the disputed domain name in bad faith.
Reverse Domain Name Hijacking
Respondent alleges that Complainant acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Reverse domain hijacking is a serious allegation and Respondent has not met its burden of establishing this claim.
Even though the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking on behalf of Complainant in bringing the instant claim. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”)
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <websterprivatewealth.com> domain name REMAIN WITH Respondent.
___________________________________________________________
Hon. Bruce E. Meyerson (Ret.), Diane Thilly Cabell as Panelists, and
David P. Miranda, as Chair
Dated: May 12, 2022
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