Webster Financial Corporation v. Venkat Kotla
Claim Number: FA0907001274589
Complainant is Webster
Financial Corporation (“Complainant”), represented by Jonathan Sterling, Esq., of
Jorden Burt LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <localhsabanks.com>, registered with 1 & 1 Internet Ag.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.
On July 21, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <localhsabanks.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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").
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 postmaster@localhsabanks.com 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 Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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:
Complainant provides business and consumer banking, mortgage, insurance, trust, investment, and other financial services.
HSA Bank is a division of Complainant, which has operated under the HSA BANK mark since December 10, 2003.
Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its HSA BANK service mark (including Reg. No. 3,161,483, issued October 24, 2006, an application having been filed December 8, 2003).
Respondent is not authorized to use the HSA BANK mark.
Respondent registered the <localhsabanks.com> domain name on December 16, 2005.
The disputed domain name resolves to a website featuring links to Complainant’s competitors in the financial services industry.
Respondent receives click-through fees from displaying these links to Complainant’s business competitors.
Respondent’s <localhsabanks.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
Respondent does not have any rights to or legitimate interests in the domain name <localhsabanks.com>.
Respondent registered and uses the <localhsabanks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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(e), 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 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
There is no dispute that Complainant has registered its HSA BANK service mark with the USPTO (Reg. No. 3,161,483, issued October 24, 2006). Likewise, there is no dispute that Complainant filed the application for this mark registration on December 8, 2003. Under the Policy, a complainant’s rights in a mark commence at the filing date of the trademark registration application. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001):
The
effective date of Complainant's federal rights is . . . the filing date of its
issued registration.
See also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s trademark rights date back to the application’s filing). Therefore, Complainant has established rights in the HSA BANK mark pursuant to Policy ¶ 4(a)(i) through filing for a registration of the mark with the USPTO as of December 8, 2003, which precedes the date of Respondent’s domain name registration.
Complainant alleges that Respondent’s <localhsabanks.com> domain name is confusingly similar to Complainant’s HSA BANK mark. The disputed domain name contains the HSA BANK mark in its entirety, and merely adds the generic term “local” and the letter “s.” The addition of a generic term and a single letter fails to distinguish the disputed domain name from Complainant’s mark. See Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001): “The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).” See also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).
The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD is 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 affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel therefore finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and
legitimate interests in the <localhsabanks.com> domain name. When a complainant makes out
a prima facie case in support of its
allegations, the burden shifts to a respondent to prove that it does have rights
to or legitimate interests in a contested domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that a complainant must first make out a prima facie
case that a respondent lacks rights to and legitimate interests in a disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent
to show that it does have rights to or legitimate interests in a domain name.
Complainant has made out a prima facie case. Because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the <localhsabanks.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to the allegations of a complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
However, we will examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the tests set out in Policy ¶ 4(c).
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent uses the <localhsabanks.com> domain name to resolve to a website featuring links to Complainant’s competitors in the financial services industry. Complainant further alleges, and Respondent does not deny, that Respondent receives click-through fees for displaying these links to Complainant’s competitors. Respondent’s use of the <localhsabanks.com> domain name in the manner alleged is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent was using the domain name to operate a website containing links to various competing commercial websites, which was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the domain pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not 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 of a contested domain pursuant to Policy ¶ 4(c)(iii), where a respondent presumably received “click-through” fees for each consumer it redirected to other websites).
We also observe that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the HSA BANK mark. For this reason, and because the pertinent WHOIS information lists Respondent merely as “Venkat Kotla,” there is no evidence on the record showing that Respondent is commonly known by the <localhsabanks.com> domain name. Therefore, we conclude that Respondent has not established that it is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
Therefore, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
We have already concluded that Respondent’s <localhsabanks.com>
domain name resolves to a website featuring advertisements for Complainant’s
competitors in the financial services industry.
This use of the <localhsabanks.com> domain name constitutes
disruption of Complainant’s financial services business, which is evidence of
bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
On the facts before us, we may presume that Respondent
receives click-through fees for the use of the contested domain name to
redirect Internet users interested in Complainant to Complainant’s competitors
in the financial services industry via the links on the resolving website. Respondent is thus attempting to profit by
creating a likelihood of confusion as to Complainant’s possible affiliation
with the resolving website. Therefore, we
conclude that Respondent’s use of the <localhsabanks.com> domain
name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb.
Forum June 11, 2006) (holding that a respondent’s use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because that respondent presumably benefited commercially
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel therefore finds the requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <localhsabanks.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 3, 2009
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