Webster Financial Corporation and Webster Bank, National Association v. Domain Administrator / Domaindeals
Claim Number: FA1406001564778
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime of Carlton Fields Jorden Burt, P.A., Connecticut, USA. Respondent is Domain Administrator / Domaindeals (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webesterbank.com>, registered with Moniker Online Services LLC.
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 June 16, 2014; the National Arbitration Forum received payment on June 16, 2014.
On June 19, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <webesterbank.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 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@webesterbank.com. Also on June 25, 2014, 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 July 22, 2014, 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.
A. Complainant
1. Complainant is using the WEBSTER BANK mark in connection with its banking services. Complainant has registered the WEBSTER BANK mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,012,979 registered Nov. 8, 2005). The <webesterbank.com> domain name is confusingly similar to the WEBSTER BANK mark in that it contains an intentional misspelling of the mark along with the addition of a generic top-level domain ("gTLD").
2. Respondent has no rights in this <webesterbank.com> domain name. Respondent has never been commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the WEBSTER BANK mark in trade. Respondent’s only use for the <webesterbank.com> domain name is to provide commercial hyperlink advertisements.
3. Respondent has acted in bad faith in registering and using the <webesterbank.com> domain name. First, Respondent is the listed respondent in nearly 200 prior UDRP decisions in which Respondent was ordered to transfer Internet domain names to the applicable complainant. Second, Respondent’s decision to host commercial hyperlinks evinces a plot to capitalize in the likelihood of Internet user confusion. Third, Respondent’s <webesterbank.com> domain name is an example of classic typosquatting and bad faith ought to be implied due to this conduct. Finally, Respondent registered this <webesterbank.com> domain name with actual and constructive notice of Complainant’s rights in the WEBSTER BANK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation and Webster Bank, National Association of Waterbury, CT, USA. Complainant is the owner of a USA registration for the mark WEBSTER BANK and several related marks which it has owned and continuously used since at least as early as 2005 in connection with its provision of wide-ranging banking and financial services.
Respondent is Domain Administrator / Domaindeals, New York, NY, USA. Respondent uses the alternative name Moniker Privacy Services, Fort Lauderdale, FL. Respondent’s registrar’s address is listed as Fort Lauderdale, FL, USA. Respondent registered the <webesterbank.com> domain name on or about September 24, 2006.
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 using the WEBSTER BANK mark in connection with its banking services. Complainant has registered the WEBSTER BANK mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,012,979 registered Nov. 8, 2005). The Panel finds that Complainant has Policy ¶ 4(a)(i) rights in the WEBSTER BANK mark by virtue of its USPTO registration. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant further claims that the <webesterbank.com> domain name is confusingly similar to the WEBSTER BANK mark in that it contains an intentional misspelling of the mark along with the addition of a gTLD. The Panel finds that the removal of spacing, addition of the gTLD, and addition of an extraneous “e” are insufficient modifications to distinguish the disputed domain from Complainant’s mark. The Panel finds that the domain name is confusingly similar to the WEBSTER BANK mark under Policy ¶ 4(a)(i). See Google Inc. v. Private Person / Andrey Skorodubov, FA 1506184 (Nat. Arb. Forum Jul. 28, 2013) (finding that the disputed domain name is confusingly similar to the complainants mark regardless of the omission of a letter and spaces in the mark and the addition of hyphens, a descriptive term, and a gTLD).
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 believes Respondent has never been commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the WEBSTER BANK mark in trade. The Panel notes that the WHOIS information lists only “Domain Administrator” as the registrant of record here. The Panel finds that nothing in this record supports a finding that Respondent was commonly known by the <webesterbank.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant claims that Respondent’s only use for the <webesterbank.com> domain name is to provide commercial hyperlink advertisements. The Panel notes that the domain name resolves to a website wherein an array of banking-related advertisements are featured. The Panel finds that these advertisements are not Policy ¶ 4(c)(i) bona fide offerings of goods or services, nor are they Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent makes 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 its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent is the listed respondent in nearly 200 prior UDRP decisions in which Respondent was ordered to transfer Internet domain names to the applicable complainant. See, e.g., Microsoft Corp. v. Moniker Privacy Services, FA1389684 (NAF June 28, 2011) (“the Panel finds that Respondent’s registration and use of the <msnnews.com> domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(iv), and that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).”); Enterprise Holdings, Inc. v. Moniker Privacy Services, FA1381725 (NAF Apr. 29, 2011) (“the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) . . . . The Panel agrees with Complainant and finds that Respondent has also registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).”). The Panel notes that evidence of prior UDRP decisions adverse to a given respondent is good evidence under Policy ¶ 4(b)(iii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). The Panel here finds that Respondent’s pattern of bad faith use and registration is evidence of Policy ¶ 4(b)(ii) bad faith with respect to the <webesterbank.com> domain name.
Complainant further claims Respondent’s decision to host commercial hyperlinks evinces a plot to capitalize on the likelihood of Internet user confusion. The Panel again notes that the domain name in dispute resolves to a simple hyperlink-laden website featuring other banking-related websites that presumably compete with Complainant. The Panel finds that Respondent’s use of the domain name reflects an intent to generate advertising revenue from a likelihood that Internet users may confuse Complainant as a source or origin of the materials promoted within the <webesterbank.com> domain name. See Allianz of 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). The Panel here finds that Policy ¶ 4(b)(iv) bad faith is present in this case.
The Panel finds that Respondent’s <webesterbank.com> domain name is an example of classic typosquatting and bad faith ought to be implied due to this conduct. The Panel notes that typosquatting is the practice of registering a domain name merely because it is a minor misspelling of another party’s trademark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Respondent’s registration of the <webesterbank.com> domain name is an example of typosquatting, which supports a finding of Policy ¶ 4(a)(iii) bad faith registration.
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 <webesterbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 5, 2014
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