national arbitration forum

 

DECISION

 

Webster Financial Corporation and Webster Bank, National Association v. Domainstand.com LLC

 

Claim Number: FA1207001452259

 

PARTIES

Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Jorden Burt LLP, Connecticut, USA.  Respondent is Domainstand.com LLC (“Respondent”), Connecticut, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <websterbankareana.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2012; the National Arbitration Forum received payment on July 10, 2012.

 

On July 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <websterbankareana.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2012 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@websterbankareana.com.  Also on July 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 8, 2012, 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 (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <websterbankareana.com> domain name is confusingly similar to Complainant’s WEBSTER BANK mark.

 

2.    Respondent does not have any rights or legitimate interests in the <websterbankareana.com> domain name.

 

3.    Respondent registered and used the <websterbankareana.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Webster Financial Corporation owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WEBSTER mark (Reg. No. 2,801,838 registered January 6, 2004), its WEBSTER BANK mark (Reg. No. 3,012,979 registered November 8, 2005), and its WEBSTER BANK W mark (Reg. No. 2,310,657 registered January 25, 2000).

Complainants have been using the WEBSTER mark since November 1, 1995.

Complainant also owns the domain name registrations for the following: <websterbankarena.com>, <websterbankarena.net>, <websterbankarena.info>, <websterbankarena.org>, <websterbankarena.biz>, <websterbankarena.us>, <websterbankarena.mobi>, and <websterbank.com>, among others.

 

Respondent’s <websterbankareana.com> domain name previously resolved to the <www.ticketsnow.com> domain name which provides Internet users with a venue to purchase tickets for events at venues across the United States.  Respondent’s <websterbankareana.com> domain name currently resolves to a non-linked web page.

 

DISCUSSION

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."

 

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.

 

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.”).

 

Preliminary Issue:  Multiple Complainants

 

In the instant proceedings there are two Complainants.  Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter:  Webster Financial Corporation and Webster Bank, National Association.  Complainant, Webster Financial Corporation wholly owns Complainant Webster Bank, a subsidiary of Webster Financial Corporation.  Both Complainants have rights in the WEBSTER BANK mark.  Both Complainants regularly advertise on the Internet, television, radio, print advertisements, and billboards along interstate highways.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Servs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.

 

The Panel finds that there is a sufficient nexus between the two Complainants in this case to treat them as a single entity in this proceeding, and they will be collectively referred to as “Complainant.” 

 

Identical and/or Confusingly Similar

 

Based on Complainant’s multiple trademark registrations with the USPTO, the Panel finds that Complainant has established rights in the WEBSTER BANK mark pursuant to Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <websterbankareana.com> disputed domain is confusingly similar to the multiple Complainant’s WEBSTER BANK mark.  Respondent adds the gTLD “.com,” adds the letter “a” to arena making it “areana,” and removes the space between WEBSTER and BANK.  Previous panels have found that the addition of the gTLD “.com” and adding descriptive words or misspelling words is not a sufficient enough variation to differentiate a disputed domain name from a complainant’s registered mark.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds no distinctive, descriptive and generic terms, some of which describe Complainant’s business.”).  Therefore, the Panel finds that Respondent’s <websterbankareana.com> domain name is confusingly similar to the Complainants’ WEBSTER BANK mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent was never commonly known by the WEBSTER BANK mark prior to Respondent’s registration of the <websterbankareana.com> domain name and that Complainant has never authorized Respondent to use Complainant’s marks in any way.  The WHOIS information lists “Domainstand.com LLC” as the registrant of the disputed domain name.  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); 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).  Thus, the Panel finds that Respondent is not commonly known by the <websterbankareana.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant states that Respondent previously used the <websterbankareana.com> domain name to resolve to a website providing Internet users with a venue to purchase event tickets throughout the United States.  Previous panels have found that the use of a confusingly similar domain name to divert Internet users to a website containing links to third party vendors is not a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy 4(c)(i) or 4(c)(iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).  The Panel finds that this use by Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy 4(c)(i) or 4(c)(iii).

 

Complainant states that Respondent’s <websterbankareana.com> domain name currently resolves to a non-linked page and no longer resolves to the <www.ticketsnow.com> website.  Complainant asserts that Respondent’s non-use of the <websterbankareana.com> domain name also 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 Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel agrees and finds that Respondent’s inactive use also fails to establish a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent is a serial cybersquatter who has a pattern of registering and using domain names that are confusingly similar to other complainant’s marks.  Complainant presents evidence of these previous cases in its complaint including: Eli Lilly & Co. v. Domainstand.com LLC, D2009-0849 (WIPO Aug. 20, 2009); Ticketmaster Corp. v. Domainstand.com LLC, D2008-0665 (WIPO June 18, 2008); Mohegan Tribal Gaming Auth. d/b/a Mohegan Sun v. Domainstand.com LLC, FA 1316792 (Nat. Arb. Forum May 10, 2010); and Megegan Tribal Gaming Auth. d/b/a Mohegan Sun v. Domainstand.com LLC, FA 1316797 (Nat. Arb. Forum May 24, 2010).  Previous panels have found bad faith pursuant to Policy 4(b)(ii) when a respondent has previous UDRP cases against it where the panel ordered the transfer of a disputed domain name.  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).  The Panel finds that Respondent exhibits a pattern cybersquatting, and has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).

 

Respondent’s <websterbankareana.com> domain name previously resolved to the <www.ticketsnow.com> domain name and allowed Internet users to purchase tickets for events across the United States.  The Panel notes that some of the links included “Top Concert Tickets,” “Popular Country & Folk Tickets,” “Popular Pop & Rock Tickets,” “Ticketsnow Guarantee” and “Make Music Not CO2.”  This use of the <websterbankareana.com> domain name created a likelihood of confusion among Internet users looking for the Complainant’s business, confusing them as to the sponsorship or endorsement of Respondent’s website, for Respondent commercial gain.  Previous panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a disputed domain name resolves to a site with multiple hyperlinks and when a respondent is financially profiting from those links.  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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).  Thus, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).

 

Respondent’s <websterbankareana.com> domain name currently resolves to a non-linked web page.  Previous panels have found that the non-use of a disputed domain name constitutes bad faith registration and use.  See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose).  Therefore, the Panel finds that Respondent’s non-use of the <websterbankareana.com> disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii).

 

Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the WEBSTER BANK mark prior to registration of the domain name.  While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <websterbankareana.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  August 15, 2012

 

 

 

 

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