Webster Financial Corporation v. George Huggins
Claim Number: FA0907001274335
Complainant is Webster
Financial Corporation (“Complainant”), represented by Jonathan Sterling, of JORDEN BURT LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabanks.info>, registered with 1&1 Internet AG.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
On July 20, 2009, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <hsabanks.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG verified that Respondent is bound by the 1&1 Internet AG registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 17, 2009, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <hsabanks.info>, is confusingly similar to Complainant’s HSA BANK mark.
2. Respondent has no rights to or legitimate interests in the <hsabanks.info> domain name.
3. Respondent registered and used the <hsabanks.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Webster Financial Corporation, operates in the business and consumer banking and financial services industry. Complainant has utilized its HSA BANK mark in connection with one of its banking divisions since December 10, 2003. Complainant uses the HSA BANK mark in its administration of some 210,000 active health savings accounts. Complainant registered its HSA BANK mark several times with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,161,483 issued October 24, 2006).
Respondent, George Huggins, registered the disputed <hsabanks.info> domain name November 24, 2006. The disputed domain name resolves to a website that displays third-party links, some of which lead to Complainant’s direct competitors in the banking and financial services industry.
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."
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 submitted evidence to the Panel of its registrations for the HSA BANK mark with the USPTO (i.e. Reg. No. 3,161,483 issued October 24, 2006). Prior UDRP precedent has determined that registration of a mark with a governmental trademark authority such as the USPTO constitutes prima facie evidence of a complainant’s rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). This Panel finds that Complainant established sufficient rights in the HSA BANK mark under Policy ¶ 4(a)(i).
The disputed <hsabanks.info> domain name
contains the HSA BANK mark while: (1) adding the letter “s;” (2) adding the
generic top-level domain “.info;” and (3) removing the space in the mark. The Panel notes that adding a top-level
domain to a mark and removing a space in the mark are irrelevant factors under
the Policy. See 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.”);
see also Bond
& Co. Jewelers, Inc. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that a complainant set forth a sufficient prima facie case that the respondent lacks such rights and legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of proof shifts to the Respondent to show such 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
When a respondent fails to answer the Complaint, the Policy permits the Panel to accept Complainant’s allegations as true unless against the weight of the evidence. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel reviews the record under the Policy ¶ 4(c) to see if it contains evidence suggesting that Respondent has such rights or legitimate interests. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant alleges that it never licensed or gave Respondent permission to use Complainant’s HSA BANK mark. The WHOIS information identifies Respondent as “George Huggins.” Given the evidence, the record contains no indication that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further argues that the disputed domain name resolves to a website that displays click-through links to Complainant’s competitors in the banking and financial services industries. The Panel agrees with Complainant’s contention that Respondent monetarily benefits from its use of the disputed domain name through the receipt of referral fees. Prior UDRP panels have found that such uses are not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that they are not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See, e.g., Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does 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).”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
Therefore, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name, which was registered November 24, 2006, resolves to a website that displays pay-per-click advertisements for Complainant’s competitors in the financial services industry. The potential for the disruption of Complainant’s business is clear, as Internet users seeking Complainant are diverted to this advertisement website. Therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent presumably benefits from this display of
competitive links and advertisements through the receipt of referral fees. The Panel finds that the Respondent’s use
permits that inference that it is intentional and likely to cause confusion as
to Complainant’s affiliation with the disputed domain name. Respondent is
opportunistically using Complainant’s mark in the disputed domain name, to pursue
commercial gain. This use supports
findings that Respondent registered and has used and continues to use the
disputed domain name in bad faith under Policy ¶ 4(b)(iv). See
The Panel finds that Complainant satisfied the elements of ICANN 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 <hsabanks.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 3, 2009.
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