Webster Financial Corporation v. Ryan G Foo / PPA Media Services
Claim Number: FA1610001699096
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hcschsabank.com>, registered with Internet Domain Service BS Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2016; the Forum received payment on October 20, 2016.
On October 25, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <hcschsabank.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 October 26, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@hcschsabank.com. Also on October 26, 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 November 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Webster Financial Corporation, is a provider of business and consumer banking, mortgage, insurance, trust investment, and other financial services. HSA Bank is a subsidiary of Complainant which uses the HSA BANK and HSABANK OWN YOUR HEALTH marks to provide health savings services across the United States and its territories. Complainant has rights in the HSA BANK OWN YOUR HEALTH mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,899,221, registered Feb. 9, 2016). See Compl., at Attached Ex. 1. Complainant also has common law rights in the HSA BANK mark. See Compl., at ¶¶ e–f. Respondent’s <hcschsabank.com> is confusingly similar as it incorporates the HSA BANK mark in its entirety, differing only by the deletion of the space and addition of “hcsc” and the generic top level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Complainant is unaware of any evidence that Respondent has ever been commonly known by <hcschsabank.com>, and Complainant has never authorized Respondent to register or use Complainant’s marks. Further, Respondent’s domain name redirects to a website containing links for health account services in direct competition with those offered by Complainant, and thus does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Ex. 11 (links include “HSA Bank,” “Health Insurance Medicare,” and “Medicare Supplement Rates”—to name a few).
Respondent’s registration and use of the disputed domain name meets the bad faith elements set forth in the Policy. Respondent’s history of adverse UDRP decisions indicates a pattern of bad faith registration of domain names—evidence of bad faith under Policy ¶ 4(b)(ii). See Compl., at Attached Ex. 22. Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to link to competing services constitutes an attempt to divert Internet users and disrupt Complainant’s business and is considered use in bad faith under Policy ¶ 4(b)(iii). Additionally, Respondent’s use of <hcschsabank.com> is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent presumably commercially benefits from the misleading domain name by receiving “click-through fees” from the linked-to competitors. Respondent’s behavior amounts to typosquatting, and its use of a privacy service are both evidence of bad faith under Policy ¶ 4(a)(iii). Furthermore, Respondent is presumed to have had actual or constructive knowledge of Complainant’s rights in its marks at the time of registration based on the inclusion of the mark in its entirety in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the financial and related industries.
2. Complainant has rights in the HSA BANK OWN YOUR HEALTH mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,899,221, registered Feb. 9, 2016).
Complainant also has common law rights in the HSA BANK mark.
3. Respondent registered the <hcschsabank.com> domain name on August 8, 2016.
4. The domain name redirects to a website containing links for health savings account services in direct competition with those offered by Complainant.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has trademark rights in both the HSA BANK OWN YOUR HEALTH and the HSA BANK mark.
(a) HSA BANK OWN YOUR HEALTH
Complainant claims rights in the HSA BANK OWN YOUR HEALTH mark based on registration with the USPTO (e.g., Reg. No. 4,899,221, registered Feb. 9, 2016). See Compl., at Attached Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the HSA BANK OWN YOUR HEALTH mark with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
(b) HSA BANK
Complainant has provided a trademark filing for the HSA BANK mark but it is not otherwise registered. See Compl., at Attached Ex. 2 (Serial No. 87094040, filed July 6, 2016). Filing for trademark protection does not confer rights in a mark for the purposes of Policy ¶ 4(a)(i). See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”). However, one does not need a valid trademark registration in order to prove rights under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, the Panel will consider if Complainant’s rights in the HSA BANK mark arise under the common law.
Complainant provides evidence that may lead to the inference that it has common law rights in the HSA BANK mark. Common law rights have been supported with evidence that leads to a secondary meaning associated with a mark. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004.”). Here, Complainant asserts that it has used the HSA BANK mark in print ads in national publications directed to the health insurance and human resources markets, such as Benefits Selling magazine (circulation 35,700) and Benefits Selling CDHC Supplement (circulation 91,000), HR Management magazine (circulation 32,000), Employee Benefits Advisor magazine (circulation 45,000), Agent Sales Journal magazine (circulation 50,000), and Health Insurance Underwriter magazine (circulation 30,000); distribution of print and electronic brochures and newsletters to agents, health plans, third party administrators, and other customers across the United States; educational seminars in at least thirty (30) different cities and many more via the Internet; national trade show sponsorships, Internet banner ads and Internet links on other websites to www.hsabank.com. See Compl., at Attached Exs. 3, 7. Further, Complainant asserts that it holds an identical website: <hsabank.com>, which in January 2009 received 23,724,560 hits, 2,945,306 web page views, and 1,482,785 visitor sessions. See Affidavit of Jeff Marshall, MCP, MCSA, Systems Administrator, HSA Bank, attached as Exhibit 8 (originally executed in connection with an earlier FORUM proceeding). Therefore, the Panel agrees that Complainant has adduced sufficient information to support common law—and therefore Policy ¶ 4(a)(i)—rights in the HSA BANK mark since at least 1997.
The second issue that arises is whether the disputed <hcschsabank.com> domain name is identical or confusingly similar to Complainant’s HSA BANK OWN YOUR HEALTH and/or HSA BANK trademarks.
The Panel agrees with Complainant that the differences between the trademarks and the domain name that have been made by Respondent include eliminating the latter portion of the HSA BANK OWN YOUR HEALTH mark—“OWN YOUR HEALTH”—and adding “hcsc” and “.com.” When a dominant portion of a mark is kept in place, confusing similarity has on occasions been found where justified by the evidence. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also UBS AG v. Zeng Jian, FA1692695 (Forum Oct. 24, 2016) (finding adding a string of letters to fail in distinguishing the disputed domain name from the mark where “Respondent’s domain name incorporates the entire UBS mark and merely differs from the mark through the addition of the gTLD ‘.com’ and the letters ‘rsb.’”). Therefore, the Panel finds that <hcschsabank.com> is confusingly similar to the HSA BANK OWN YOUR HEALTH mark under Policy ¶ 4(a)(i).
Complainant also submits that the <hcschsabank.com> domain name is confusingly similar to the HSA BANK mark, as the domain name incorporates the mark in its entirety, minus the space, and merely adds the generic or descriptive term “hcsc,” and the gTLD “.com.” Panels have found that addition of a generic or descriptive phrase and a gTLD is not enough to distinguish a domain name from a mark under the Policy. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Similarly, the removal of a space from a mark does not distinguish a disputed domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s HSA BANK mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s HSA BANK OWN YOUR HEALTH and HSA BANK trademarks and to use them in its domain name, adding the generic term “hcsc” which does not detract from the confusing similarity that is clearly present;
(b) Respondent registered the disputed domain name on August 8, 2016;
(c) The domain name redirects to a website containing links for health savings account services in direct competition with those offered by Complainant;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant argues that Respondent has no rights or legitimate interests in <hcschsabank.com> as it is not commonly known by the domain name, nor has Respondent been authorized by Complainant to use the HSA BANK mark. The WHOIS information of record identifies Respondent as “Ryan G. Foo” with “PPA Media Services.” WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, panels have found evidence of a lack of rights or legitimate interests in a domain name where there is no evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(f) Complainant further argues Respondent’s lack of rights or legitimate interests in <hcschsabank.com> is evinced by its failure to use the domain name for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Complainant contends that the disputed domain name redirects to Respondent’s website at <ww1.hcschsabank.com>, which contains links including those labeled “HSA Bank,” and “HSA Bank Account.” See Compl., at Attached Ex. 11. These links connect Internet users to websites containing links to companies which offer services in direct competition to those offered by Complainant. Panels have held that an attempt to divert Internet users for commercial gain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel agrees that Respondent’s use of the disputed domain name and failure to make a bona fide offer of goods or services or a legitimate non-commercial or fair use is evidence of its lack of rights and legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has a pattern of bad faith registrations, evinced by “hundreds of arbitration decisions” against Respondent for incorporating trademarks of others in domain names. Complainant claims there are more than 150 NAF and WIPO decisions against Respondent, including three previous cases in which Complainant obtained transfers under the UDRP. See Compl., at Attached Ex. 22 (e.g., Bare Escentuals Beauty, Inc. v. PPA Media Services / Ryan G Foo, FA1407001572597 (Forum Sept. 30, 2014)). Evidence of a respondent’s ongoing pattern of bad faith registration and use of domain names can support a finding of bad faith under the Policy. See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). The Panel takes notice of these past decisions and finds Respondent has a pattern of bad faith registration that indicates bad faith in this case under Policy ¶ 4(b)(ii).
Secondly, Complainant also argues that Respondent’s diversion of traffic to a website containing links to services that compete with those of Complainant is evidence of Policy ¶¶ 4(b)(iii) and (iv) bad faith. Respondent’s <hcschsabank.com> domain name resolves to a website that links to Complainant’s direct competitors. See Compl., at Attached Ex. 11. Panels have held that the linking to services that compete with those of a complainant constitutes an attempt to compete and cause a disruption, and is therefore evidence of bad faith. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Complainant also presumes that Respondent profits from confused Internet users clicking the links on the resolving website, possibly through the receipt of “click-through fees.” Attempts to confuse and attract users for commercial gain may also be taken as evidence of bad faith registration and use under the Policy. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel finds that Respondent has by that means engaged in bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in its marks. Complainant argues that inclusion of Complainant’s mark in its entirety in Respondent’s <hcschsabank.com> domain name indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, Complainant argues alternatively that Respondent’s registration and use of the <hcschsabank.com> domain name amounts to typosquatting. Complainant alleges that one reason for registering the disputed domain name with the addition of “hcsc” to Complainant’s mark was to exploit possible mistyping by internet users when trying to reach Complainant’s web page at <www.hsabank.com>. Panels have held that typosquatting amounts to bad faith. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). As the Panel agrees that adding “hscs” to the HSA BANK mark amounts to a mistyping of the mark, it determines that it constitutes “typosquatting” and therefore bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues Respondent’s use of a privacy shield is further evidence of bad faith. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <hcschsabank.com> domain name using the HSA BANK OWN YOUR HEALTH and HSA BANK trademarks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hcschsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: November 22, 2016
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