Webster Financial Corporation v. Information Central, Inc.
Claim Number: FA0807001215121
Complainant is Webster Financial Corporation (“Complainant”), represented by Diane
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thehsabankonline.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2008.
On July 14, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thehsabankonline.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Complainant amended its Complaint on July 18, 2008, in accordance with the National Arbitration Forum’s request, to properly identify Respondent’s name and contact information to match that which is shown on the current WHOIS page, and to remit payment in the amount of $1,300.00.
On July 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on August 8, 2008.
Complainant submitted an Additional Submission on August 13, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7.
Thereafter, Respondent replied on August 18, 2008, said Additional Submission also being timely and complete, pursuant to Supplemental Rule 7.
On August 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name <thehsabankonline.com> be transferred from Respondent to Complainant.
Complainant alleges as follows:
Complainant, Webster Financial
Corporation, is a
Respondent alleges as follows
ISI and ICI are
C. Additional Submissions
Complainant in its Additional Submission, alleges as follows:
Complainant did not enter into initial settlement agreements with Respondent, as Respondent was registered with a privacy registration service, that is, Domains by Proxy. Complainant later entered settlement negotiations with Respondent, citing that Respondent was unreasonable in its monetary request of $1,300, and unfounded in its belief that the word “the” distinguished the domain name. Respondent later demanded $2,500.00 to transfer the name. Respondent’s stated purpose of gathering and disseminating information about HSAs, is, of itself, evidence of bad faith, as it competes directly with HSA Bank. The increased demand amount of $2,500.00 exceeds out-of-pocket costs, and is therefore evidence of bad faith. Further evidence of bad faith is Respondent’s admission that it owns several other domain name registrations that include the HSA Bank mark, such as <hsabankaccounts.com> Following Complainant’s filing of the Complaint, Respondent purchased several more domain name registrations that violate Complainant’s rights in its HSA BANK registered mark, such as <hsabanksites.com>, which was purchased on July 24, 2008. This action further evidences Respondent’s bad faith use and registration of <thehsabankonline.com> domain name registration. Respondent incorrectly asserts that its purchase of the domain name pre-dates the use of the HSA BANK mark.
Complainant must necessarily enforce its trademark rights in the HSA BANK mark against Respondent, and Complainant has not unreasonably delayed in bringing this action against Respondent. HSA BANK is not a generic term, but rather a valid trademark (Reg. Nos. 3,161,483 and 3,274,343 for HSA Bank). Under US trademark law (15 U.S.C. Sec. 1057(b)) these registrations serve as prima facie evidence of the validity of the HSA BANK mark; that Complainant owns the HSA BANK mark; and that Complainant has the exclusive right to use the HSA BANK mark in commerce to describe the services identified in the Certificate of Registration. Respondent incorrectly assumes that the party who first registers a domain name will obtain superior legal rights in that domain name. Further Respondent incorrectly assumes that a trademark owner must purchase all possible domain name registrations that incorporate the trademark, though Complainant currently owns over twenty five (25) domain name registrations that contain the HSA BANK mark, per Complainant’s Exhibit 4.
Respondent in its Additional Submission, alleges as follows:
ISI (ICI) has always stood ready to negotiate a settlement. Rather, it has been Complainant who has refused to enter into such talks. After Complainant offered $100.00 to buy the disputed name, Respondent countered with $2,500.00 and received no response to said counter-offer. ISI (ICI) utilizes its website to ask questions of subjects involved in its research on HSAs. It is a very confidential tool for researching the behavior of subjects involved in purchasing HSA investments. Respondent stated that its address was doing no harm to Complainant, and in fact, was helping Complainant to conduct its business. Respondent advised the Panel that “As President Lyndon B. Johnson said, “men of goodwill can reason together, and avoid the lawyers.” Respondent further states that “HSA,” “Bank,” and “Online” are generic terms. Respondent in its Additional Submission states that while Complainant claims to be using HSA BANK in commerce since at least as early as December 10, 2003, HSAs as a government-approved offering went into effect on January 1, 2004. The MSA Bank and website were renamed HSA “multiple quarters” later. The law does not require Complainant to purchase all domain name registrations that could include HSA Bank. And finally, “Our main business is the gathering of HSA information and not holding up HSA Bank for large amounts of monies.”
1. The domain name <thehsabankonline.com> registered by Respondent is identical or confusingly similar to a service mark (HSA BANK) in which Complainant has rights.
2. Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that Complainant has sufficiently established rights pursuant to Policy ¶ 4(a)(i) in the HSA BANK mark for banking services, through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,161,483 issued October 24, 2006), dating back to the filing date of the mark on December 8, 2003. See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (“Complainant asserts rights in the KISSES trademark through registration of the mark with the USPTO. As such rights date back to the filing date of the trademark application and predate Respondent’s registration, Complainant has established rights in the KISSES mark for purposes of satisfying Policy ¶ 4(a)(i).”).
The <thehsabankonline.com> domain name contains Complainant’s HSA BANK mark, preceded by the word “the,” and followed by the word “online.” Complainant’s HSA BANK mark is used in connection with banking services, many of which are themselves offered “online” over the Internet. The incorporation of the article “the” and a descriptive word “online” that has an obvious relation to Complainant’s business is usually found to have no distinguishing characteristics. See Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article”the” is “often added only for grammatical purposes, and may be superfluous to the name itself”); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The incorporation of the generic top-level domain (“gTLD”) “.com” is likewise most often found to be irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). For all of the aforementioned reasons, the Panel finds that the disputed domain name <thehsabankonline.com> is confusingly similar to Complainant’s service mark HSA BANK pursuant to 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant states that it has never authorized Respondent to use the HSA BANK mark in any domain name. Additionally, Complainant purports that there is no evidence indicating that Respondent has ever commonly been known by the name HSA BANK or the disputed domain name. Respondent does not contest any of these statements in its Response. Consequently, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed
to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that the disputed domain name is being used to resolve to a website offering services in direct competition with those offered under Complainant’s mark, including health savings account administration services. The Panel finds that Respondent’s direct competitive use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 in its Additional Submission that Respondent offered to sell the disputed domain name to Complainant for $2,500.00. The Panel determines this to be further evidence of a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
in its Additional Submission that Respondent offered to sell the disputed
domain name to Complainant for $2,500.00
Complainant contends that this amount is far in excess of Respondent’s
out-of-pocket costs. Complainant urges
the Panel to find that Respondent’s attempt to profit from the disputed domain
name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). The Panel so concludes that Respondent’s counter-offer
of $2,500.00 is sufficient evidence of bad faith, despite Respondent’s
protestations in its Amended Response that the figure was obtained from
industry experts. See Neiman Marcus
Group, Inc. v. AchievementTec, Inc., FA
192316 (Nat. Arb. Forum Oct. 15, 2003)
(finding the respondent’s offer to sell the domain name for $2,000 sufficient
evidence of bad faith registration and use under Policy ¶ 4(b)(i));
see also Little Six, Inc. v. Domain For
Complainant alleges in its Additional Submission that since the filing of the instant Complaint, Respondent has registered several more domain names containing Complainant’s HSA BANK mark. Complainant contends that these domain names also infringe on Complainant’s rights, and demonstrate a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). However, Policy ¶ 4(b)(ii) is only applicable when the complainant cites previous UDRP decisions decided against the respondent, or when multiple domain names are the subject of the instant dispute.
Complainant asserts in its Complaint and in its Additional Submission that Respondent’s <thehsabankonline.com> domain name has been registered for the purpose of disrupting Complainant’s business and for commercial gain because Respondent is offering competing services on the website resolving from the disputed domain name. Respondent admits that it offers services similar to the services Complainant offers under its mark. Consequently, the Panel finds that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant states that the services offered through the disputed domain name are all contained in the variety of links contained on the website resolving from the disputed domain name. The Panel finds that these services are substantially similar to Complainant’s own services, such as health savings account administration and servicing, to find that they are competitive services. Under such circumstances, the Panel presumes that Respondent is commercially benefiting from its ownership of the disputed domain name. Therefore, this Panel finds that this usurpation of services constitutes additional evidence of Respondent’s bad faith registration and use of the <thehsabankonline.com> domain name pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
And finally, Complainant argues that Respondent registered and is using the disputed domain name “in spite of actual or constructive knowledge” of Complainant’s rights in the HSA BANK mark. Complainant contends that Respondent reasonably should have been aware of Complainant’s registered mark because the disputed domain name contains Complainant’s mark in its entirety. This presumed awareness can be garnered from the mark’s exposure explicated in Complainant’s Exhibit 3, that is, Affidavit of Kirk Hoewisch, President of HSA Bank: “ Since at least as early as December 10, 2003, Webster Financial Corporation, through its licensee, Webster Bank, National Association, and its predecessor entity, State Bank of Howards Grove, has exclusively, continuously and on a widespread basis, used and promoted the HSA BANK mark in commerce.”
The Affidavit further states that “HSA Bank is one of the largest administrators of health savings accounts in the United States, with over 210,000 active accounts, over $520 million in bank deposits, and over $30 million in brokerage investments. In its nationwide advertising, Complainant has featured the HSA Bank brand in a variety of media including, but not limited to print ads in national publications such as HR Magazine….” The Panel concludes that this widespread usage is ample evidence of actual or constructive knowledge of Complainant’s mark, so as to support a finding of Respondent’s bad faith registration and use of the <thehsabankonline.com> domain name pursuant to Policy ¶ 4(a)(iii). See BluegreenCorp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thehsabankonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: September 1, 2008
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