Webster Financial Corporation and Webster Bank, National Association v. DARREN BATES
Claim Number: FA1411001589756
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 DARREN BATES (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterwealth.com>, registered with ENOM, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2014; the National Arbitration Forum received payment on November 12, 2014.
On November 13, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <websterwealth.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@websterwealth.com. Also on November 13, 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 December 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant owns rights in the WEBSTER mark, as demonstrated by registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,334,640, registered Nov. 13, 2007). Complainant uses the mark in connection with its banking and financial services. The <websterwealth.com> domain name is confusingly similar to the WEBSTER mark as the addition of the term “wealth” is descriptive of Complainant’s wealth management services.
Respondent has no rights or legitimate interests in the <websterwealth.com> domain name. Respondent is not commonly known by the “Webster Wealth” name, and Complainant has not authorized Respondent’s use of the WEBSTER mark. The website resolving from the disputed domain name is a yet-to-be developed WordPress blog. A domain name that resolves to a website purporting to be a WordPress blog template with no substantive content is not protected as a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent’s passive holding of the disputed domain name is evidence of bad faith use and registration. Further, Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the WEBSTER mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 uses the WEBSTER mark in connection with its banking and financial services. Complainant claims rights in the WEBSTER mark, citing registrations with the USPTO (e.g., Reg. No. 3,334,640, registered Nov. 13, 2007). The Panel agrees that Complainant’s registration of the WEBSTER mark with USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues the <websterwealth.com> domain name is confusingly similar to the WEBSTER mark as the added term “wealth” is descriptive of Complainant’s wealth management services. The disputed domain name also contains the generic top-level domain (“gTLD”) “.com,” which is irrelevant to the confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The addition of the term “wealth” to the WEBSTER mark serves to increase the likelihood of confusing as the term relates to Complainant’s financial services offered under the mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Accordingly, the Panel finds the <websterwealth.com> domain name is confusingly similar to the WEBSTER mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <websterwealth.com> domain name. Complainant urges that Respondent is not commonly known by the “Webster Wealth” name, and that Complainant has not authorized Respondent’s use of the WEBSTER mark. The WHOIS information lists “DARREN BATES” as the registrant of record. Based on the available evidence, the Panel determines there is no evidence that Respondent is commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant asserts that the website resolving from the disputed domain name is a yet-to-be developed WordPress blog. Complainant argues that a domain name that resolves to a website purporting to be a WordPress blog template with no substantive content is not protected as a bona fide offering of goods or services, or a legitimate noncommercial or fair use. In Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the panel wrote, “Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).” Accordingly, the Panel agrees that Respondent’s use of the disputed domain name in connection with an unaltered blog template amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent’s passive holding of the disputed domain name is evidence of bad faith use and registration. The disputed domain name resolves to a website populated by a WordPress blog template. In a comparable case, Lockheed Martin Corp. v. Derek Bissen, FA 1497401 (Nat. Arb. Form June 7, 2013), the panel determined that the respondent’s use of the domain name to display a blog template with no additional content constituted inactive use bad faith, saying, “[t]he Panel finds this limited use does not constitute an active use of the domain name,” and finding bad faith under Policy ¶ 4(a)(iii). The Panel agrees that Respondent has failed to make an active use of the disputed domain name, and finds that Respondent’s limited use of the disputed domain name evinces Policy ¶ 4(a)(iii) bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Complainant claims Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the WEBSTER mark. Past panels have determined that constructive knowledge itself is insufficient to support a finding of bad faith. However, panels have inferred actual knowledge based on the totality of the circumstances in order to find bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). The Panel infers Respondent had actual knowledge of Complainant and its WEBSTER mark at the time of domain registration, and finds evidence of Policy ¶ 4(a)(iii) bad faith.
Complainant has proven this element.
Claimant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <websterwealth.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 15, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page