Webster Financial Corporation and Webster Bank, National Association v. I S / ICS INC
Claim Number: FA1607001683305
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Connecticut, United States. Respondent is I S / ICS INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webstereonline.com>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2016; the Forum received payment on July 11, 2016.
On July 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <webstereonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2016 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@webstereonline.com. Also on July 13, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the WEBSTERONLINE.COM mark in connection with its business of providing financial services.
Complainant has registered the WEBSTERONLINE.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,409,243, registered Apr. 8, 2008), which establishes rights in the mark.
Respondent’s <webstereonline.com> domain name is confusingly similar to the WEBSTERONLINE.COM mark as it is merely a typosquatted version of Complainant’s mark.
Respondent has no rights or legitimate interests in the <webstereonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WEBSTERONLINE.COM mark.
Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, through the <webstereonline.com> domain name. Rather, the domain resolves to webpage that includes an automatic redirection of Internet users to a website that hosts fraudulent virus alerts and attempts to solicit personal information from Internet users via a phishing scheme that prompts users to download files with unknown content.
Respondent registered and is using the domain in bad faith. First, Respondent has over 800 adverse UDRP findings against it. Second, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Third, Respondent has engaged in the tactic of typosquatting. Fourth, Respondent used a privacy service to withhold identifying information. Finally, Respondent registered the domain with at least constructive knowledge of the WEBSTERONLINE.COM mark due to Respondent’s use of the mark in the disputed domain and Complainant’s trademark registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the WEBSTERONLINE.COM mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent currently uses the at-issue domain name to address a webpage that hosts fraudulent virus alerts and attempts to solicit personal information from Internet users via a phishing scheme that prompts users to download files of unknown content.
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(f), 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in WEBSTERONLINE.COM through its registration of such mark with the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (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 at-issue domain name contains an obvious misspelling of Complainant’s WEBSTERONLINE.COM trademark where the letter “e” is inserted after the term “webster”. The trivial difference between the Complainant’s trademark and Respondent’s domain name is insufficient to distinguish one from the other for the purpose of Policy ¶ 4(a)(i). Therefore the Panel finds that the <webstereonline.com> domain name is confusingly similar to Complainant’s WEBSTERONLINE.COM trademark. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015) (finding confusing similarity where the respondent misspelled the word “bank” by transposing the letters “a” and “n,” attached the gTLD “.com,” and eliminated spacing with respect to the CAPITAL ONE BANK mark to create the <capitalonebnak.com> domain name.).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “I S / ICS INC” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <webstereonline.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to address a webpage that hosts fraudulent virus alerts and attempts to solicit personal information from Internet users via a phishing scheme that prompts users to download files containing unknown content. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has hundreds of adverse UDRP findings against it including three adverse decisions concerning Complainant. Respondent’s pattern of domain name abuse suggests bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (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)); see also Vera Bradley, Inc. v. PPA Media Services / Ryan G Foo, FA1516883 (Forum Oct. 16, 2013) (finding that Respondent “is a recalcitrant, serial cybersquatter” and that “Respondent’s multiple prior adverse UDRP decisions suggest bad faith registration and use in the instant proceeding under Policy ¶4(b)(ii)”).
Next as mentioned above concerning rights and interests, Respondent uses the at-issue domain name to attract Internet users to a website that is designed to download malicious software. These circumstances demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Additionally, Respondent has engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant. In our case, Respondent exploits the accidental visits to its website by attempting to download malware to the visitors, and otherwise. Respondent’s typosquatting is further evidence of bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <webstereonline.com> domain name with actual knowledge of Complainant’s trademark rights in WEBSTERONLINE.COM. Respondent’s prior knowledge is evident from Respondent’s overt misspelling of such mark in Respondent’s confusingly similar domain name. Therefore the Panel finds that Respondent intentionally registered the at-issue domain name to improperly exploit WEBSTERONLINE.COM’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webstereonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 11, 2016
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