Webster Financial Corporation v. subject to dispute
Claim Number: FA1011001360197
Complainant is Webster Financial Corporation (“Complainant”), represented by Jonathan Sterling of Jorden Burt LLP, Connecticut, USA. Respondent is subject to dispute (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <websterlonline.com>, <websternline.com>, and <securehsabank.com>, registered with ABOVE.COM PTY LTD.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2010; the National Arbitration Forum received payment on November 30, 2010.
On November 24, 2010, ABOVE.COM PTY LTD confirmed by e-mail to the National Arbitration Forum that the <securehsabank.com> domain name is registered with ABOVE.COM PTY LTD and that Respondent is the current registrant of the names. On January 11, 2011, ABOVE.COM PTY LTD confirmed by e-mail to the National Arbitration Forum that the <websterlonline.com> and <websternline.com> domain names are registered with ABOVE.COM PTY LTD and that Respondent is the current registrant of the names. ABOVE.COM PTY LTD has verified that Respondent is bound by the ABOVE.COM PTY LTD 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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2011 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@websterlonline.com, postmaster@websternline.com, and postmaster@securehsabank.com. Also on January 14, 2011, 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 February 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 (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. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <websterlonline.com> and <websternline.com> domain names are confusingly similar to Complainant’s WEBSTER mark.
Respondent’s <securehsabank.com> domain name is confusingly similar to Complainant’s HSA BANK mark.
2. Respondent does not have any rights or legitimate interests in the <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names.
3. Respondent registered and used the <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Webster Financial Corporation, provides business and consumer banking, mortgage, insurance, trust, and investment services. Complainant uses the WEBSTER and HSA BANK marks in connection with its financial services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WEBSTER mark (e.g., Reg. No. 2,801,838 issued January 1, 2004). In addition, Complainant holds numerous trademark registrations with the USPTO for the HSA BANK mark (e.g., Reg. No. 3,161,483 issued October 24, 2006).
Respondent registered the <websterlonline.com> domain name on December 22, 2009; the <websternline.com> domain name on November 21, 2009; and the <securehsabank.com> domain name on January 31, 2010. The disputed domain names resolve to websites that provide hyperlinks to Complainant’s competitors as well as to websites that are unrelated to Complainant.
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.
Complainant claims rights in the WEBSTER mark through its registrations of the mark with the USPTO (e.g., Reg. No. 2,801,838 issued January 1, 2004). Complainant also claims rights in the HSA BANK mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,161,483 issued October 24, 2006). The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the WEBSTER and HSA BANK marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Additionally, the Panel finds that it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges Respondent’s <websterlonline.com> and <websternline.com> domain names are confusingly similar to its WEBSTER mark. Respondent replicates Complainant’s mark in the disputed domain names and then attaches misspelled versions of the generic term “online” to the mark. Respondent also affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain names. The Panel finds that these additions do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Accordingly, the Panel finds that Respondent’s <websterlonline.com> and <websternline.com> domain names are confusingly similar to Complainant’s WEBSTER mark pursuant to Policy ¶ 4(a)(i).
Complainant further alleges Respondent’s <securehsabank.com> domain name is confusingly similar to its HSA BANK mark. Respondent fully incorporates Complainant’s mark in the disputed domain name and then merely omits the spaces between the words in the mark. In addition, Respondent adds the generic term “secure” and the gTLD “.com” to Complainant’s mark in the disputed domain name. The Panel finds that these additions do not negate a finding of confusingly similar. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Reese v. Morgan, supra. Therefore, the Panel holds that Respondent’s <securehsabank.com> domain name is confusingly similar to its HSA BANK mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <securehsabank.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights and legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts it has never given Respondent permission to use its WEBSTER or HSA BANK marks in any way. Furthermore, the WHOIS information lists “subject to dispute” as the registrant of the <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names, which is not similar to any of the domain names. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant claims the <websterlonline.com> and <securehsabank.com> domain names resolve to directory websites that provide hyperlinks to third-party sites that offer financial services in competition with Complainant’s financial services. Complainant submits screen shots of the websites resolving from the <websterlonline.com> and <securehsabank.com> domain names. These images show websites that contain hyperlinks with titles like “Checking Account,” “Money Market Account,” “Mortgage,” and “Credit Card Application.” In addition, Complainant claims the <websternline.com> domain name resolves to a directory website that provides hyperlinks to third-party sites that are unrelated to Complainant. Screen shots of the resolving website show a site that displays hyperlinks with titles like “Find Top Business Schools,” “New York University,” and “Online College.” Complainant contends that Respondent profits from its use of the <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names through the receipt of click-through fees. The Panel finds that Respondent uses the disputed domain names in an attempt to profit from offering hyperlinks to Complainant’s competitors and other third-party websites. Therefore, the Panel holds that Respondent does not use the disputed domain names to make 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <websterlonline.com> and <securehsabank.com> domain names to redirect Internet users seeking Complainant’s services to websites that provide hyperlinks to Complainant’s competitors. Therefore, the Panel finds that Respondent uses the <websterlonline.com> and <securehsabank.com> domain names to disrupt Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See 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); see also 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)).
As previously discussed, the Panel presumes that Respondent profits from its use of the <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names through the receipt of click-through fees. Moreover, the disputed domain names are confusingly similar to Complainant’s WEBSTER and HSA BANK marks. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant's WEBSTER and HSA BANK marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Accordingly, the Panel finds that this behavior constitutes registration and use in bad faith under Policy ¶ 4(b)(iv). See 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)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has satisfied 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 <websterlonline.com>, <websternline.com>, and <securehsabank.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
February 21, 2011
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