Webster Financial Corporation and Webster Bank, National Association v. ICS INC.
Claim Number: FA1301001481476
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. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websternank.com>, registered with Tucows, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2013; the National Arbitration Forum received payment on January 22, 2013.
On January 23, 2013, Tucows, Inc confirmed by e-mail to the National Arbitration Forum that the <websternank.com> domain name is registered with Tucows, Inc and that Respondent is the current registrant of the names. Tucows, Inc has verified that Respondent is bound by the Tucows, 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 January 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2013 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@websternank.com. Also on January 24, 2013, 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 February 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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 name be transferred from Respondent to Complainant.
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.”
The two Complainants in this matter are Webster Financial Corporation, and Webster Bank, N.A. Complainants contend that the Webster Bank, N.A. is a wholly-owned subsidiary of parent Webster Financial Corporation.
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.
The Panel accepts that the evidence in the Complaint establishes a sufficient link between the Complainants and treats them as a single entity in this proceeding. Throughout the decision the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Policy ¶ 4(a)(i): Complainant’s rights and the confusing similarity of the domain name.
Policy ¶ 4(a)(ii): Respondent lacks rights and legitimate interests in the domain name.
Policy ¶ 4(a)(iii): Respondents registered and are using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation and Webster Bank, National Association who list its address as Waterbury CT, USA. Complainant offers a wide range of financial services, including online banking services, under names and marks incorporating the mark WEBSTER. Complainant began using the WEBSTER mark in 1995 and has continuously used it in connection with its business and services since that time. Complainant’s website presence is maintained at <websteronline.com>.
Respondent is ICS Inc. who list its address as Grand Cayman, Cayman Islands and Contact Privacy Inc. who list its address as Toronto, Canada. The Respondent’s registrar of the disputed domain name also list its address as Toronto, Canada. The Respondent registered the <websternank.com> domain name on September 4, 2012.
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.”).
Complainant contends that it owns USPTO registrations for the WEBSTER family of marks, including WEBSTER BANK (Reg. No. 3,012,979 registered on Nov. 8, 2005). The Panel finds that the USPTO registrations satisfy Complainant’s Policy ¶ 4(a)(i) showing of rights, even though neither Respondent is located in the USA. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also contends that Respondent’s <websternank.com> domain name is confusingly similar to the WEBSTER BANK mark because it incorporates the dominant components of the WEBSTER BANK mark with the intentional misspelling of “bank” to “nank.” Complainant further contends that the addition of the “.com” gTLD does not overcome the confusing similarity of the domain name. The Panel notes that Respondent removed the spacing from the mark. The Panel finds however that neither the addition of a gTLD nor the deletion of the spacing in a mark is relevant under the Policy. See 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)). The Panel also finds that the replacement of the letter “b” with the letter “n” does nothing but illustrate the confusing similarity of the disputed domain name. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The Panel finds that the <websternank.com> domain name is confusingly similar to the WEBSTER BANK mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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). The Complainant has met this burden.
Complainant claims that it is unaware of any evidence that Respondent has ever been commonly known by the <websternank.com> domain name prior to registering the name. The Panel notes that the WHOIS information lists “INC., ICS” as the registrant of the disputed domain name. Previous panels have concluded that a respondent is not commonly known by a domain name when there is no evidence in the record to connect the respondent to the name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel finds that Respondent is not commonly known as the <websternank.com> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the <websternank.com> domain name in connection with a bona fide offering of goods or services, and that Respondent has not made a legitimate noncommercial or fair use of the domain name. Complainant bases these allegations on the argument that Respondent is hosting links to financial services that offer credit cards and other products in competition to Complainant. The Panel notes that the disputed domain name resolves to a website dedicated almost exclusively to hyperlinks that redirect Internet users to other financial and credit card companies. See Complainant’s Ex. 11. Previous panels have concluded that no bona fide offering, or legitimate noncommercial or fair use, exist when a respondent uses a domain name to host hyperlinks that compete with a complainant’s business. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent’s use of the <websternank.com> domain name fails to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, and that Respondent has not made a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the domain name.
Complainant argues that Respondent’s decision to register a domain name that is merely a misspelling of the WEBSTER BANK mark illustrates typosquatting. The Panel agrees that by merely replacing the letter “b” with the letter “n,” Respondent has failed to illustrate rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
Respondent make no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet their burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element
Complainant contends that Respondent is using the confusingly similar <websternank.com> domain name to confuse Internet users into believing the competing hyperlinks and products promoted on the disputed domain name are associated with Complainant. As a result, Complainant contends that its business is harmed while Respondent seeks commercial gains via advertisement revenues. The Panel again notes that the <websternank.com> domain name resolves to a website dominated by competing hyperlinks. See Complainant’s Ex. 11. The Panel finds that Respondent’s decision to host competing hyperlinks on the confusingly similar domain name illustrates a bad faith attempt to gain profits by confusing Internet users into believing the domain name is affiliated with Complainant. 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 finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent’s typosquatting behavior is in itself evidence of bad faith use and registration. The Panel finds that the Respondent’s decision to register a domain name that embodies a simple single-character misspelling of the WEBSTER BANK mark showcases bad faith use and registration under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (holding that the practice of typosquatting “diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <websternank.com> domain name be TRANSFERRED from Respondents to Complainant.
Darryl C. Wilson, Panelist
Dated: March 4, 2013
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