Webster Financial Corporation v. Bank of Cashton
Claim Number: FA1010001350481
Complainant is Webster Financial Corporation (“Complainant”), represented by Jonathan Sterling of Jorden Burt LLP, Connecticut, USA. Respondent is Bank of Cashton (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <minnesotahsabank.com> and <wisconsinhsabank.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 15, 2010.
On October 5, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 October 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@minnesotahsabank.com and postmaster@wisconsinhsabank.com. Also on October 18, 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 November 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <minnesotahsabank.com> and <wisconsinhsabank.com> domain names are confusingly similar to Complainant’s HSA BANK mark.
2. Respondent does not have any rights or legitimate interests in the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names.
3. Respondent registered and used the <minnesotahsabank.com> and <wisconsinhsabank.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, investment and other financial services Complainant’s HSA BANK division is an administrator of health savings accounts and provides services in all fifty states, the District of Columbia, Puerto Rico, Guam, and the U.S. Virgin Islands. Complainant owns multiple trademark registrations for the HSA BANK mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 3,161,483 issued October 24, 2006 and
Reg. No. 3,274,343 issued August 7, 2007.
Respondent, Bank of Cashton, registered the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names on June 3, 2010. The disputed domain names originally resolved to websites displaying pay-per-click links to third-party providers of competitive financial services. Currently, the disputed domain names are not being actively used.
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 owns multiple trademark registrations for the HSA BANK mark with the USPTO:
Reg. No. 3,161,483 issued October 24, 2006 and
Reg. No. 3,274,343 issued August 7, 2007.
The Panel finds that registration of a trademark with the USPTO sufficiently establishes Complainant’s rights in the HSA BANK mark for the purposes of Policy ¶ 4(a)(i). See Paisely Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <minnesotahsabank.com> and <wisconsinhsabank.com> domain names are confusingly similar to Complainant’s HSA BANK mark because both disputed domain names only vary from Complainant’s mark in the following minor ways: the addition of the geographic terms “minnesota” or “wisconsin,” the elimination of the space between the terms of Complainant’s mark, and the attachment of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the presence of a geographic term in the disputed domain names does not sufficiently change Complainant’s mark to prevent confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also finds that neither the eliminated space between terms nor the attached gTLD overcomes a finding of confusing similarity. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <minnesotahsabank.com> and <wisconsinhsabank.com> domain names are confusingly similar to Complainant’s HSA BANK mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant is required by Policy ¶ 4(a)(ii) to put forth a prima facie case in regard to this assertion. Subsequently, the burden shifts to Respondent to demonstrate that it does possess rights or legitimate interests in the disputed domain name. In the instant proceedings, the Panel concludes that Complainant has sufficiently established a prima facie case. Respondent’s failure to respond results in an inference by the Panel that Respondent lacks any rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to consider the evidence presented in light of the Policy ¶ 4(c) factors in order to make an independent determination on whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that it has not authorized Respondent to use Complainant’s mark. The WHOIS information for the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names lists the registrant as “Bank of Cashton,” which does not reflect that Respondent is commonly known by the disputed domain names. The Panel finds that the lack of any evidence in the record, and in the WHOIS information, indicates that Respondent is not commonly known by the disputed domain names and accordingly lacks rights and legitimate interests in the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s <minnesotahsabank.com> and <wisconsinhsabank.com> domain names previously resolved to a directory website displaying pay-per-click links to websites offering financial and banking services in competition with those offered by Complainant. The Panel finds that maintaining such a links-focused page in connection with disputed domain names that appropriate Complainant’s mark is not 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 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also alleges that Respondent’s <minnesotahsabank.com> and <wisconsinhsabank.com> domain names currently do not resolve to an active website, as the resolving website merely displays a message stating, “Sorry! This site is not currently available.” The Panel finds that Respondent’s failure to make active use of the disputed domain names also indicates a lack of rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s <minnesotahsabank.com> and <wisconsinhsabank.com> domain names previously redirected Internet users to a generic webpage advertising topical links for various third-party products offered by Complainant. These pay-per-click links promoting other business that compete in the financial services industry with Complainant clearly disrupted Complainant’s business because the unwary Internet users may have arrived at Respondent’s directory website and have been directed away from Complainant, despite an initial attempt to visit Complainant’s website. The Panel finds that Respondent’s use of the disputed domain names to divert Complainant’s intending customers thus demonstrated bad faith registration and use according to 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).
Complainant argues that Respondent’s use of Complainant’s HSA BANK mark is intended to attract Complainant’s customers attempting to reach Complainant’s web page. After arriving on Respondent’s page, the Internet users resulted in profit to Respondent by way of “click-through” fees if they clicked on any of the links previously hosted on Respondent’s directory web page. The Panel finds that Respondent’s efforts to mislead and attract Complainant’s customers to Respondent’s own web page for commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! In. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Allianz v. Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant now contends that Respondent is not currently using the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names to resolve to an active website. The Panel finds that Respondent’s failure to make active use of the disputed domain is further evidence of Respondent’s bad faith registration and use according to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <minnesotahsabank.com> and <wisconsinhsabank.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 16, 2010
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