Webster Financial Corporation and Webster Bank, National Association v. NA / Frank Park
Claim Number: FA1311001529131
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Jonathan C. Sterling of Jorden Burt LLP, Connecticut, USA. Respondent is NA / Frank Park (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websteronlne.com>, registered with Media Elite Holdings Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2013; the National Arbitration Forum received payment on November 8, 2013.
On November 20, 2013, Media Elite Holdings Limited confirmed by e-mail to the National Arbitration Forum that the <websteronlne.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 16, 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@websteronlne.com. Also on November 26, 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 December 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM marks. Respondent’s domain name is confusingly similar to Complainant’s WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <websteronlne.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 is a federally-chartered national bank whichoffers a wide range of banking and financial services, including online banking and checking account services. Complainant is the owner of trademark registrations with the USPTO for the WEBSTER mark (e.g., Reg. No. 3,334,639, registered November 13, 2007, filed January 31, 2006); for the WEBSTERONLINE.COM mark (Reg. No. 3,409,243, registered April 8, 2008, filed September 7, 2006); and for the WEBSTER BANK mark (Reg. No. 3,012,979, registered November 8, 2005). Although Respondent appears to reside in Korea, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can demonstrate rights in the mark in some jurisdiction. See 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). Therefore, the Panel concludes that Complainant’s registration of the WEBSTER and WEBSTERONLINE.COM marks sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). See 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.”).
Complainant alleges that Respondent’s <websteronlne.com> domain name is confusingly similar to Complainant’s WEBSTER BANK mark. The Panel notes that Respondent removes the term BANK from Complainant’s WEBSTER BANK mark for its domain name. Respondent’s removal of terms from Complainant’s mark is irrelevant to Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark).
Respondent adds a misspelled version of the generic term “online” to Complainant’s mark for the <websteronlne.com> domain name. Respondent’s addition of a generic term does not distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. Respondent’s inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) determination. See 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 concludes that Respondent’s <websteronlne.com> domain name is confusingly similar to Complainant’s WEBSTER BANK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that it is unaware of any evidence that Respondent was ever commonly known by the names WEBSTER or WEBSTER ONLINE (or misspellings thereof) prior to Respondent’s registration of the <websteronlne.com> domain name. Complainant argues that the WHOIS record for the domain name was previously listed as “PrivacyProtect.org” and thereafter changed to list “Frank Park.” Complainant contends that it has never authorized Respondent to register or use the WEBSTER or WEBSTERONLINE.COM marks in any manner. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Consequently, the Panel finds that Respondent is not commonly known by the <websteronlne.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s <websteronlne.com> website contains links for financial services in direct competition with those offered by Complainant. Respondent’s domain name resolves to a webpage containing competing links titled “Online Banking,” “Local Banks Directory,” “Checking Account,” and more. Complainant asserts that Respondent is intentionally attempting to divert Internet users to Respondent’s site for commercial gain. Therefore, the Panel finds that Respondent is not using the <websteronlne.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the WHOIS record for the domain name was previously listed as “PrivacyProtect.org” and thereafter changed to list “Frank Park.” Complainant asserts that there are more than 500 NAF and WIPO arbitration decisions and several federal district court decisions against Respondent “PrivacyProtect.org” in which it registered domain names incorporating the trademarks of others. E.g., Silicon Laboratories Inc. v. PrivacyProtect.org / Domain Name ID#10760, FA 1458016 (Nat. Arb. Forum Sept. 24, 2012); Regions Asset Company v. PrivacyProtect.org / Domain Admin, FA 1439913 (Nat. Arb. Forum May 31, 2012). Complainant claims hese decisions establish a pattern of bad faith domain name registrations that also indicate bad faith in the present proceeding. Because the Panel finds that Respondent “Frank Park” is in fact “PrivacyProtect.org,” the Panel agrees with Complainant that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer demonstrates bad faith use and registration under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Complainant alleges that Respondent’s use of the <websteronlne.com> domain name is evidence of bad faith because the domain name provides links to Complainant’s competitors and Respondent presumably commercially benefits from the misleading domain name by receiving click-through fees. Respondent’s <websteronlne.com> domain name resolves to a website containing competing hyperlinks such as “Online Banking,” “Local Banks Directory,” “Checking Account,” and others. Because the Panel finds that Respondent is using the disputed domain name to mislead consumers for which it commercially gains, the Panel holds that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Complainant asserts that by deleting only one letter from Complainant’s registered mark WEBSTERONLINE.COM, Respondent has engaged in typosquatting. Respondent removes the letter “i” in Complainant’s WEBSTERONLINE.COM mark for its <websteronlne.com> domain name. Typosquatting exists where there is a domain name containing a typographical error with respect to a complainant’s mark or a correlation between an incorrect letter found in the domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent registered the <websteronlne.com> domain name with actual knowledge of Complainant’s rights in the WEBSTER BANK mark. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds 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 <websteronlne.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 3, 2014
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