Webster Financial Corporation v. Alliance Health, Inc.
Claim Number: FA1002001307434
Complainant is Webster Financial Corporation (“Complainant”), represented by Jonathan Sterling, of Jorden Burt LLP, Connecticut, USA. Respondent is Alliance Health, Inc. (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alliancehsabank.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <alliancehsabank.com> domain name is registered with GoDaddy.com, Inc. and that 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").
On February 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2010 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@ alliancehsabank.com. Also on February 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. Respondent’s <alliancehsabank.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
2. Respondent does not have any rights or legitimate interests in the <alliancehsabank.com> domain name.
3. Respondent registered and used the <alliancehsabank.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Webster Financial Corporation, is a financial services business. Complainant has used its HSA BANK mark in connection with its financial services since December 10, 2003. Complainant uses the HSA BANK mark in its administration of some 210,000 active health savings accounts. Complainant holds several HSA BANK trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,161,483 issued October 24, 2006).
Respondent, Alliance Health, Inc., registered the disputed <alliancehsabank.com> domain name March 3, 2009. The disputed domain name resolves to a website that displays third-party links, some of which lead to Complainant’s direct competitors.
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 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 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.
This Panel finds that Complainant has established sufficient rights in the HSA BANK mark through its registrations for the HSA BANK mark with the USPTO. 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).”).
The disputed <alliancehsabank.com> domain name
contains the HSA BANK mark while: (1) adding the generic term “alliance”; (2)
adding the generic top-level domain “.com”; 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <alliancehsabank.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. 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. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The WHOIS information for the <alliancehsabank.com> domain name lists “W Alliance Health, Inc.” as the registrant of the disputed domain name. However, Complainant asserts Respondent is not licensed or otherwise authorized to use the HSA BANK mark. Without further evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also 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 of that it is commonly know by the disputed domain name).
Complainant provides evidence that Respondent uses the disputed domain name to resolve to a website featuring links to Complainant’s competitors in the financial services industry. Respondent presumably receives click-through fees for displaying these links to Complainant’s competitors. The Panel finds Respondent’s use of the <alliancehsabank.com> domain name 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website that displays click-through links to Complainant’s competitors in the financial services industry. Respondent’s use of the disputed domain name diverts Internet users seeking Complainant, which constitutes a disruption of Complainant’s business. Therefore, the Panel finds Respondent has 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 through the receipt of click-through fees. The Panel finds Respondent’s use is an
attempt to profit from Internet users’ confusion as to Complainant’s
affiliation with the disputed domain name.
The Panel concludes Respondent registration and use of the disputed
domain name is in bad faith under Policy ¶ 4(b)(iv). See
Univ.
of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”); see
also Asbury Auto. Group, Inc.
v. Tex. Int’l Prop. Assocs.,
FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of
the disputed domain name to advertise car dealerships that competed with the
complainant’s business would likely lead to confusion among Internet users as
to the sponsorship or affiliation of those competing dealerships, and was
therefore evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alliancehsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 5, 2010
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