Webster Financial Corporation v. Zhichao Yang
Claim Number: FA1611001704954
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabankaccount.com>, registered with NameSilo, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.
On November 30, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <hsabankaccount.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@hsabankaccount.com. Also on December 6, 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 January 3, 2017, 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 name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the HSA BANK. Respondent’s <hsabankaccount.com> domain name is confusingly similar to the HSA BANK mark because it contains the mark, minus the space, along with the term “account,” and the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <hsabankaccount.com> domain name because it is not authorized to use the HSA BANK mark and because there is no evidence of Respondent being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains links to competitors of Complainant.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior adverse UDRP decisions. Respondent uses the <hsabankaccount.com> domain name in bad faith because the resolving website contains links to competitors of Complainant. Respondent registered the <hsabankaccount.com> domain name in bad faith because it did so with knowledge of Complainant’s rights in the HSA BANK mark and through the use of typosquatting and a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Webster Financial Corporation of Waterbury, CT, USA. Complainant is the owner of numerous domestic and international registrations for the mark HSA BANK and related marks, which it has used continuously since at least as early as 2003 in connection with its provision of banking, insurance, trust, and investment services. Complainant is also the owner of many domain name registrations related to its registered marks including <hsabank.com>.
Respondent is Zhichao Yang of Anhui, China. Respondent’s registrar’s address is indicated as Phoenix, AZ, USA. The Panel notes that the <hsabankaccount.com> domain name was created on or about September 28, 2015.
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.”).
Complainant claims rights in the HSA BANK mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) for use with banking services. Complainant claims to own Registration Numbers 3,161,483 and 3,274,343 for the mark, but has not provided copies of such registrations here, however the claims are easily verifiable online. The Panel here finds that Complainant has rights in the HSA BANK mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant asserts that Respondent’s <hsabankaccount.com> domain name is confusingly similar to the HSA BANK mark because it incorporates the mark, minus the space, along with the term “account,” and the gTLD “.com.” Complainant maintains that “account” is not a term that sufficiently differentiates the domain name and mark. The Panel notes that the addition of generic terms, like “account”, generally fails to distinguish a domain name from a protected mark. The Panel here finds the domain name and mark confusingly similar. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also 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)).
Respondent asserts no contentions with regards to Policy ¶ 4(a)(i).
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), 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). Complainant has met this burden.
Complainant maintains that Respondent is not commonly known by the <hsabankaccount.com> domain name because it is not authorized to use the HSA BANK mark and because there is no evidence of Respondent being so known. The Panel notes that Respondent has provided no evidence contrary to Complainant’s assertions. The Panel here finds that Respondent is not, nor has Respondent ever been, commonly known by the disputed domain. 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).
Complainant contends that Respondent fails to use the <hsabankaccount.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains links to competitors of Complainant. Complainant has provided a screenshot of the resolution page. Respondent’s domain name resolves to a website displaying various related links with titles such as, “Bank Account Debit Card,” and “US Bank HSA.” The Panel finds that Respondent does not use the <hsabankaccount.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior adverse UDRP decisions. Complainant has provided copies of such cases. The Panel finds that Respondent’s behavior evidences a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”).
Complainant maintains that Respondent uses the <hsabankaccount.com> domain name in bad faith because the resolving website contains links to competitors of Complainant. Complainant has provided a screenshot demonstrating this use. The Panel finds the evidence sufficient to conclude that Respondent uses the <hsabankaccount.com> domain name in bad faith according to Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum January 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because 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 <hsabankaccount.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page