Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut
Claim Number: FA1502001605819
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 Pham Dinh Nhut (“Respondent”), Ho Chi Minh City, Vitenam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wensterbank.com> and <webstronline.com> registered with April Sea Information Technology Company 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2015; the Forum received payment on February 19, 2015. The Complaint was received in both Vietnamese and English.
On February 24, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <wensterbank.com> and <webstronline.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company 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 March 2, 2015, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of March 23, 2015 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@wensterbank.com, postmaster@webstronline.com. Also on March 2, 2015, the Vietnamese language 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 3, 2015 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 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 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
Complainant owns the WEBSTER BANK and the WEBSTERONLINE.COM marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,012,979, registered November 8, 2005 and Reg. No. 3,409,243, registered April 8, 2008, respectively). Complainant offers banking and financial services, including online banking, checking account, and mortgage loan services and uses the WEBSTER BANK and the WEBSTERONLINE.COM marks in connection with its services. The <wensterbank.com> is confusingly similar to the WEBSTER BANK mark. The domain name contains Complainant’s mark in full, changes the letter “b” to “n”, and adds the generic top-level domain (“gTLD”) “.com” to the domain name. The <webstronline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark. The domain name contains Complainant’s mark in full and merely omits the letter “e.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, as evidenced by the WHOIS records for the disputed domain names. Further, Complainant has never authorized Respondent to use the WEBSTER BANK and the WEBSTERONLINE.COM trademarks. Respondent’s lack of rights or legitimate interests in the disputed domain names is made further evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to websites that feature hyperlinks to financial service offerings that compete with Complainant.
Respondent has engaged in bad faith registration and use of the <wensterbank.com> and <webstronline.com> domain names. Respondent has engaged in a pattern of bad faith registration and use, as evidence by prior adverse UDRP decisions. Respondent uses confusingly similar domain names to divert Internet users to websites that compete with Complainant, which disrupts Complainant’s business. Further, by choosing a domain name connected with Complainant’s well-known marks, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Additionally, Respondent had knowledge or should have had knowledge of Complainant’s business. Finally, Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Matter: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making Vietnamese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in English.
Complainant is Webster Financial Corporation and Webster Bank, National Association of Waterbury, CT. Complainant is the owner of domestic registrations for the marks WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM as well as more than 35 additional related registrations comprising the WEBSTER family of marks. Complainant has used the WEBSTER mark continuously since at least as early as 1995 in connection with its provision of banking, insurance, trust and investment services. Complainant is also the owner of more than 40 domain name registrations related to its registered marks including <websterbank.com> and <websteronline.com>.
Respondent is Pham Dinh Nhut of Ho Chi Minh City, Vitenam. Respondent’s registrar’s address is listed as the same location. The Panel notes that <wensterbank.com> and <webstronline.com> were registered on or about June 1, 2007 and April 30, 2007, respectively.
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 WEBSTER BANK and the WEBSTERONLINE.COM marks through registration with the USPTO (e.g., Reg. No. 3,012,979, registered Nov. 8, 2005 and Reg. No. 3,409,243, registered April 8, 2008, respectively). Complainant states that it offers banking and financial services, including online banking, checking account, and mortgage loan services and uses the WEBSTER BANK and the WEBSTERONLINE.COM marks in connection with its services. The Panel finds that Complainant’s valid registration of the WEBSTER BANK and the WEBSTERONLINE.COM marks with the USPTO sufficiently demonstrates Complainant’s rights in the marks for purposes of 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 asserts that the <wensterbank.com> domain name is confusingly similar to the WEBSTER BANK mark. The domain name contains Complainant’s mark in full, changes the letter “b” to “n”, and adds the gTLD “.com” to the mark. Prior panels have found that changing one letter of a complainant’s registered mark fails to overcome confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Further, past panels have agreed that the addition of a gTLD is irrelevant to the analysis of confusing similarity. 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 Panel here finds that the <wensterbank.com> domain name is confusingly similar to the WEBSTER BANK mark under Policy ¶ 4(a)(i).
Complainant further argues that the <webstronline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark. The domain name contains Complainant’s mark in full and merely omits the letter “e.” Prior panels have determined that domain names that vary by only one letter are confusingly similar under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
The Panel here finds that the <webstronline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark under Policy ¶ 4(a)(i).
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), 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 asserts that Respondent has no rights or legitimate interests in the disputed domain names. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain name, as evidenced by the WHOIS records for the disputed domain names. The Panel notes that the WHOIS information for both disputed domain names list “Pham Dinh Nhut” as the registrant of records. Further, Complainant has never authorized Respondent to use the WEBSTER BANK and the WEBSTERONLINE.COM trademarks. The Panel finds that Complainant’s contentions, and Respondent’s failure to provide any evidence to the contrary are sufficient to establish Respondent’s lack of rights to the disputed domain names under 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s lack of rights or legitimate interests in the disputed domain names is made further evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Respondent’s disputed domain names resolve to websites that feature hyperlinks to financial service offerings that compete with Complainant. Prior panels have found that the use of competing hyperlinks by a respondent does not qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). The Panel here finds that Respondent’s use of disputed domain names to host competing hyperlinks is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further finds that Respondent’s use does not reflect “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
Complainant also argues that Respondent has engaged in typosquatting, which further demonstrates Respondent’s lack of rights or legitimate interests in respect of the disputed domain names. Users might mistakenly reach Respondent’s websites by inadvertently typing the disputed domain names, which each vary by only one character. Taking advantage of Internet users’ typographical errors, known as typosquatting, has been found by prior panels to be illustrative of respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Respondent’s acts of typosquatting provide additional evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As 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 contends that Respondent has engaged in bad faith registration and use of the <wensterbank.com> and <webstronline.com> domain names according to Policy ¶ 4(a)(iii). Complainant argues that Respondent is a “serial cybersquatter” and has engaged in a pattern of such behavior, which demonstrates bad faith registration under Policy ¶ 4(b)(ii). According to Complainant, Respondent has engaged in a pattern of cybersquatting and typosquatting and has been involved in numerous prior UDPR proceedings. See e.g. TaxHawk, Inc. v. Pham Dinh Nhut, FA 1431444. Prior panels have agreed that having multiple prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. 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).”). The Panel here finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent uses confusingly similar domain names to divert Internet users to websites that compete with Complainant, which disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). Past panels have found that the use of competing hyperlinks in a disputed domain name amounts to a disruption of a complainant’s business, and supports a finding of bad faith registration and use. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent’s disruptive behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Further, by choosing a domain name connected with Complainant’s well-known marks, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel again notes that Respondent uses competing hyperlinks on its resolving websites. Some of these competing hyperlinks include, “Small Business Bank,” “Payment Gateway,” and “Bank Card Services.” Past Panels have agreed that use of competing hyperlinks constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Complainant additionally contends that Respondent has engaged in typosquatting, which is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). Users here would merely need to mistype only one character to be mistakenly directed to Respondent’s website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel here finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
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 <wensterbank.com> and <webstronline.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 17, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page