Webster Financial Corporation and Webster Bank, National Association v. ICS INC. / Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1211001472286
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Jorden Burt LLP, Connecticut, USA. Respondent is ICS INC. / Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <websterarena.com>, <websteronliine.com>, and <webaterbank.com>, registered with eNom, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 20, 2012; the National Arbitration Forum received payment on November 20, 2012.
On November 21, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <websterarena.com>, <websteronliine.com>, and <webaterbank.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 26, 2012, the Forum sent to the Complainant a deficiency letter, stating that as it appears there are multiple Respondents for the disputed domain names, the Complainant must choose which Respondent(s) and corresponding disputed domain name(s) to remove from the complaint, or, in the alternative, argue before the panel that the multiple Respondents are, in fact, one Respondent.
On November 30, 2012, the Complainant submitted an amended Complaint.
On December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2013 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@websterarena.com, postmaster@websteronliine.com, postmaster@webaterbank.com. Also on December 3, 2012, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
On December 12, 2012, the Complainant and the Respondent ICS Inc. / Whois Privacy Protection Services Inc. filed a joint request to stay the administrative proceeding. The stay was granted.
On January 25, 2012, the Complainant requested that the stay be lifted. This request was granted.
Timely Responses were received and determined to be complete on February 5, 2013.
On February 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainants allege that they are a federally-chartered national bank offering a wide range of banking and financial services under names and marks incorporating the term WEBSTER. They provide business and consumer banking, mortgage, insurance, trust, and investment services through 168 branches, 473 ATMs, a call center, and the Internet.
The Complainants state that they own U.S. service mark registrations for WEBSTER, WEBSTERONLINE.COM, and WEBSTER BANK. In addition, they own numerous other marks containing the term WEBSTER and numerous domain names containing that term, including <websteronline.com> and <websterbankarena.com>.
According to the Complainants, in January, 2011, they entered into a naming rights agreement for the sporting and entertainment venue known as the Webster Bank Arena.
The Complainants allege that the Respondent Whois Privacy Protection Service, Inc./ Whois Agent is an alias of the Respondent ICS INC. ICS INC. routinely uses Whois Privacy Protection Service, Inc. / Whois Agent as an alias to shield its identity when registering domain names. For example, in both Crédit Agricole S.A. v. ICS INC. / Whois Privacy Protection Service, Inc., D2012-1755 (WIPO Oct. 18, 2012) and Hardee’s Food Systems, Inc. v. Whois Privacy Protection Service, Inc. / ICS Inc., D2012-1696 (WIPO Oct. 18, 2012), ICS INC. and Whois Privacy Protection Service, Inc. were treated as a single respondent.
The Complainants present substantive arguments regarding the disputed domain name <webaterbank.com>, but do not argue that the Respondent Profile Group is in fact the same as the Respondent Whois Privacy Protection Service, Inc./ Whois Agent / ICS INC. For the reasons set forth below, the Panel will not summarize the Complainants’ contentions regarding the disputed domain name <webaterbank.com>.
According to the Complainants, the <websterarena.com> website contains links to purchase tickets for various events at venues across the United States.
According to the Complainants, the website located at <websteronliine.com> contains sponsored advertising links that bring the user directly to the websites of the Complainants’ competitors, or to web pages detailing financial services offerings with links to competitors. The Respondent’s use of that disputed domain name therefore creates a likelihood of confusion among users by creating the perception and impression that the Complainants sponsor or endorse the Respondent’s website.
The Complainants allege that the disputed domain names are confusingly similar to its mark. They cite UDRP precedents to support their position.
The Complainants state that they never licensed or otherwise authorized the Respondents to use their marks or the disputed domain names. The Respondents are not commonly known by the mark WEBSTER or by the disputed domain names.
The Complainants allege that use of a confusingly similar domain name to divert Internet users to a website containing links to products and services that compete with those of the Complainants is not a bona fide offering of goods or services pursuant to UDRP Policy ¶ 4(c)(i). Instead, this demonstrates that the Respondent registered and is using the disputed domain names in bad faith, for the purpose of intentionally attempting to divert, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation, and endorsement of the services offered through the Respondent’s websites. The Complainants cite UDRP precedents to support their position.
Further, say the Complainants, the Respondent’s use of the disputed domain names is evidence of bad faith pursuant to UDRP Policy ¶ 4(b)(iv) because the domain names provide links to the Complainants’ competitors and the Respondent commercially benefits from the misleading domain name by receiving click-through-fees. The Complainants cite UDRP precedents to support their position.
The Complainants allege that the Respondent Whois Privacy Protection Service, Inc./ Whois Agent is a serial cybersquatter who has engaged in a pattern of registering and using domain names that include the marks of other parties, which is evidence of bad faith registration and use of the disputed domain names. The Complainants cite UDRP precedents to support their position.
B. Respondent
Regarding the domain names <websterarena.com> and <websteronliine.com>
The Respondent Whois Privacy Protection Service, Inc./ Whois Agent states that it is a privacy service and not the registrant of the disputed domain names. It states that the first two disputed domain names are owned by ICS INC., while the third is owned by Profile Group. Further, it states that it has forwarded the Complaint to the registrants who will reply as appropriate.
Respondent Profile Group states that it has offered to transfer that disputed domain name to the Complainant at no cost and remains willing to do so. It states that it does not own or control the other disputed domain names.
There are two unrelated respondents in the instant proceedings. The Panel will consider only the case involving the domain names <websterarena.com> and <websteronliine.com>.
The Complainants have rights in the registered trademark WEBSTER.
The disputed domain names were registered well after the Complainants registered their mark.
The Complainants have not licensed or otherwise authorized the Respondent to use their mark.
The Respondent is using the disputed domain names to resolve to websites that contain sponsored advertising links to a variety of products and services, including products and services that compete with the Complainants’ products and services.
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.
Prior to dealing with those three elements of the Policy, the Panel will deal with two preliminary issues: multiple complainants and multiple respondents.
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.”
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 & Paralymic Games & 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 Am. Family Health Srvs. 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 accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, thus it will treat them as a single entity in this proceeding.
Preliminary Issue: Multiple Respondents
The Complainants contend that Whois Privacy is an alias of ICS INC.; and that ICS INC. has an ongoing relationship with Whois Privacy and routinely uses Whois Privacy Protection Service, Inc. as an alias in order to shield its identity, as it did when registering the <websterarena.com> and <websteronliine.com> domain names. The Complainants cite UDRP decisions to support their position. The cited decisions analyze the arguments presented by the complainants and the respondents and proceed to a decision on the basis of that analysis.
The present Panel will proceed in the same way. The Panel notes that the Respondent ICS INC. has not submitted a substantive response. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate.
The Panel notes that the Response submitted by Profile Group indicates that the Complainant has incorrectly filed and listed the Respondents. Profile Group claims it is the respondent for the <webaterbank.com> domain name but not for the other two domain names.
Since the Complainants have not argued (much less presented evidence to prove) that Profile Group is an alias for ICS INC. or for Whois Privacy, the Panel concludes that the instant proceedings involve two unrelated registrants. Thus, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), the Panel is required to dismiss the Complaint in relation to the domain name <webaterbank.com>.
The Panel will now proceed to analyze the three elements of the Policy for the other two disputed domain names.
The Complainants asserts that Respondent’s <websterarena.com>, and <websteronliine.com> domain names are confusingly similar to their WEBSTER mark. The <websteronliine.com> domain name adds an additional “i” to “online” which the Complainants claim is an intentional case of typosquatting. The Complainants claim that the <websterarena.com> domain name is similar to its established Internet presence relating to “websterbankarena.” The Panel notes that the <websterarena.com> domain name contains the Complainants’ WEBSTER mark in its entirety with the addition of the term “arena” and the gTLD “.com.” Previous panels have found that these variations are insufficient to distinguish a disputed domain name from a given mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel thus finds that the <websterarena.com> and <websteronliine.com> domain names are confusingly similar to Complainant’s WEBSTER mark pursuant to Policy ¶ 4(a)(i).
The Complainants claim that the Respondent has no rights or legitimate interests in the <websterarena.com> and <websteronliine.com> domain names because it is not commonly known by the disputed domain names. The Complainants claim that they have never authorized the Respondent to register or use their WEBSTER mark in any way. The Complainants further argue that they are unaware of any evidence showing that Respondent is commonly known by the WEBSTER mark. Previous panels have found that when the WHOIS information lists a registrant that has no connection to the disputed domain names and the Complainant has not authorized the Respondent to use the disputed domain name, this may indicate that Respondent is not commonly known by the disputed domain names. See 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). The Panel finds that the Respondent is not commonly known by the disputed domain names.
The Complainants argue that the Respondent has no rights or legitimate interests in the <websterarena.com> and <websteronliine.com> domain names as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Indeed, the <websterarena.com> domain name contains links to event venues across the United States featuring ticket sales to different events that compete with those sponsored by the Complainants and the <websteronliine.com> domain names resolves to a website containing links for financial services, some of which compete directly with those offered by the Complainant. Previous panels have found that using confusingly similar domain names to resolve to a website displaying links to third-parties that compete with the Complainant’s business or unrelated third parties is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain names because it is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii).
The Respondent ICS INC. (who did not reply to the Complainants’ substantive contentions) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed the Complainants argue (and provide evidence to show) that the Respondent is using the <websterarena.com> and <websteronliine.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because it is intentionally attempting to divert the Complainants’ potential customers to its resolving websites for commercial gain by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, and endorsement of the services offered by Respondent’s resolving websites. The Respondent’s resolving websites contain links to third parties that compete with the Complainant and the Respondent thereby commercially benefits from the click-through fees associated with Internet users’ participation. Previous panels have found that using confusingly similar domain names to resolve to a site featuring links that compete with a complainant’s business is bad faith registration and use pursuant to 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).”).
The Panel therefore finds that the Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Regarding the domain name <webaterbank.com>, the Panel dismisses the case without prejudice.
Regarding the domain names <websterarena.com> and <websteronliine.com>, having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <websterarena.com> and <websteronliine.com> domain names be TRANSFERRED from Respondent ICS INC. to Complainant.
Richard Hill, Panelist
Dated: February 17, 2013
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