Webster Financial Corporation and Webster Bank, National Association v. Lin yanxiao / yanxiao lin
Claim Number: FA1408001575278
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 Lin yanxiao / yanxiao lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websteroline.com>, registered with Cyrus the Great, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2014; the National Arbitration Forum received payment on August 15, 2014.
On August 19, 2014, Cyrus the Great, LLC confirmed by e-mail to the National Arbitration Forum that the <websteroline.com> domain name is registered with Cyrus the Great, LLC and that Respondent is the current registrant of the name. Cyrus the Great, LLC has verified that Respondent is bound by the Cyrus the Great, 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 August 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@websteroline.com. Also on August 20, 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 September 15, 2014, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <websteroline.com> domain name, the domain name at issue, is confusingly similar to Complainant’s WEBSTERONLINE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the WEBSTERONLINE.COM mark through a trademark registration with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,409,243 registered April 8, 2008). Complainant uses the WEBSTER-family of marks, including the WEBSTERONLINE.COM mark, to offer a wide range of banking and financial services. The <websteroline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark as the domain name omits the letter “n” from the otherwise included mark.
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent was ever commonly known by the “Webster” or “websteronline.com” name. As to use, the disputed domain name resolves to a page promoting links for financial services in direct competition with those offered by Complainant.
Respondent has acted in bad faith as demonstrated on five grounds. First, Respondent is a serial typosquatter as demonstrated by four prior UDRP decisions adverse to Respondent. Second, Respondent’s activities have disrupted Complainant’s own operations as the disputed domain name resolves to a page promoting competing links. Third, Respondent has attempted to mislead and confuse Internet users in hopes of attaining commercial benefit. Fourth, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the pertinent mark. Fifth, Respondent relies on Internet users’ misspellings, which amounts to typosquatting. The disputed domain name was registered on March 28, 2014.
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 owns the WEBSTERONLINE.COM mark through a trademark registration with the USPTO (Reg. No. 3,409,243 registered April 8, 2008) and uses the WEBSTER-family of marks, including the WEBSTERONLINE.COM mark, to offer a wide range of banking and financial services. Complainant’s registration with the USPTO satisfies the initial requirements of Policy ¶ 4(a)(i). 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.”).
The <websteroline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark as the domain name omits the letter “n” from the otherwise included mark. Prior panels have frequently held that the full inclusion of a complainant’s mark but for a single letter remains confusingly similar to the mark in spite of the omission. For example, in Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006), the panel found that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity. Accordingly, the <websteroline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark for purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent was ever commonly known by the “Webster” or “websteronline.com” name. The WHOIS information identifies “Lin yanxiao / yanxiao lin” as the registrant of record. In light of the available evidence, which does not include a response from Respondent, the Panel finds that there is insufficient evidence to show that Respondent is commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).
Next, the disputed domain name resolves to a page promoting links for financial services in direct competition with those offered by Complainant. The disputed links include “Debt Consolidation Loans,” “Online Checking Account,” and “Online Banking Here.” Respondent’s use of the <websteroline.com> domain name to promote links to services in competition with Complainant in the financial services sector does not amount to 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). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is a serial typosquatter as demonstrated by four prior UDRP decisions adverse to Respondent. Complainant cites four decisions where Respondent was deemed to have acted in bad faith: ER Marks, Inc. and QVC, Inc. v. Lin Yanxiao, No. 1430698 (Nat. Arb. Forum April 13, 2012); RingCentral, Inc. v. Lin Yanxiao, No. 1543485 (Nat. Arb. Forum March 20, 2014); Sallie Mae, Inc. v. WhoIs Agent/linyanxiao, D2013-1170 (WIPO August 26, 2013); Inteas Sanpaolo S.p.A. v. Yanxiao Lin, DES2013-0035 (WIPO December 26, 2013). Previous panels have concluded that prior adverse UDRP decisions may be used to inform the panel’s bad faith determination in subsequent cases. See, e.g., Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, the Panel finds that Respondent’s prior history of bad faith evidences bad faith in the present matter pursuant to Policy ¶ 4(b)(ii).
Further, Respondent’s activities have disrupted Complainant’s own operations as the disputed domain name resolves to a page promoting competing links. The disputed domain name resolves to promote links such as, “Debt Consolidation Loans,” “Online Checking Account,” and “Online Banking Here.” Respondent’s use of the disputed domain name to promote links in competition with Complainant evidences bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Moreover, Respondent has attempted to mislead and confuse Internet users in hopes of attaining commercial benefit. Prior panels have agreed that such use amounts to bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel finds that Respondent is benefiting from the suspect linked pages and finds Policy ¶ 4(b)(iv) bad faith use and registration.
It also appears to the Panel that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the pertinent mark. In Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014), the panel wrote, “The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.” This Panel infers that Respondent had knowledge of Complainant’s rights in the mark based on the totality of circumstances, and therefore finds additional evidence of Policy ¶ 4(a)(iii) bad faith.
Finally, Respondent has engaged in typosquatting by taking advantage of users misspellings of Complainant’s mark. The <websteroline.com> domain name differs from the WEBSTERONLINE.COM mark only by the omission of the letter “n.” The Panel finds that this behavior amounts to typosquatting, which is additional evidence of bad faith pursuant to Policy¶ 4(a)(iii). 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).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <websteroline.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 16, 2014
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