Webster Financial Corporation and Webster Bank, National Association v. Drop One - Buy/Sell/Lease and Snapping Services c/o Nick M
Claim Number: FA0607000757534
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Diane Duhaime, of Jorden Burt LLP, 175 Powder Forest Drive, Suite 201, Simsbury, CT 06089-9658. Respondent is Drop One - Buy/Sell/Lease and Snapping Services c/o Nick M (“Respondent”), P.O.Box 121503, Dubai 100001 AE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wwwwebsteronline.com>, registered with Enom.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 24, 2006.
On July 24, 2006, Enom confirmed by e-mail to the National Arbitration Forum that the <wwwwebsteronline.com> domain name is registered with Enom and that Respondent is the current registrant of the name. Enom has verified that Respondent is bound by the Enom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwwebsteronline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <wwwwebsteronline.com> domain name is confusingly similar to Complainant’s WEBSTER mark.
2. Respondent does not have any rights or legitimate interests in the <wwwwebsteronline.com> domain name.
3. Respondent registered and used the <wwwwebsteronline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Webster Financial Corporation, is a financial services corporation. Complainant, Webster Bank, is a federally chartered bank and a wholly owned subsidiary of Webster Financial Corporation. These two entities shall be referred to collectively as “Complainant” for the purposes of this dispute. Complainant holds multiple registrations with the United States Patent and Trademark Office for the WEBSTER mark (Reg. No. 2,801,838 issued January 6, 2004; Reg. No. 78803646 issued January 31, 2006). Complainant utilizes the WEBSTER mark in connection with offering banking and financial services to individuals and businesses. Complainant has registered the domain names <websteronline.com> and <websterbank.com> in order to operate websites for Internet users to access Complainant’s financial goods and services.
Respondent registered the <wwwwebsteronline.com> domain name on May 1, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website. Respondent’s website does not include any original content and is instead composed solely of links to third-party websites, some of which offer financial goods and services in direct competition with Complainant, for example “Online Banking,” “Mortgage” and “Internet Banking.”
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."
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.”).
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.
Complainant’s registration of the WEBSTER mark with the USPTO pre-dates Respondent’s registration of the disputed domain name and is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <wwwwebsteronline.com> domain name
is confusingly similar to Complainant’s WEBSTER mark. The disputed domain name incorporates the WEBSTER mark in its
entirety and adds the prefix “www” as well as the descriptive term
“online.” Adding the prefix “www” to a
domain name mimics the form that most domain names take when typed into a web
browser, but without the customary period between the “www” and the domain
name. By adding the prefix directly
onto the domain name, Respondent is mimicking a common typing error, not
creating a distinct domain name. The
term “online” could easily be assumed to describe Complainant’s online banking
services. In fact, Complainant’s
genuine website includes the term “online.”
The term “online” is descriptive of Complainant’s business and does not
create a distinct domain name. The
Panel finds that Respondent’s minor additions to Complainant’s mark do not
overcome the confusing similarity between the disputed domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to establish identity [sic] or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks.”); see also Bank of Am. Corp. v. InterMos, FA 95092
(Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to the complainant’s
registered trademark BANK OF AMERICA because it “takes advantage of a typing
error (eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet.”); see also Broadcom Corp. v.
Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the
<broadcomonline.com> domain name is confusingly similar to the complainant’s
BROADCOM mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <wwwwebsteronline.com> domain name. Complainant’s assertion creates a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). In spite of Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests as contemplated by Policy ¶ 4(c).
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features links to third-party websites. Many of the featured links are to websites offering financial goods and services in competition with Complainant. The Panel finds that such use is not a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) since Respondent’s website does not offer any specific goods or services to Internet users. The Panel further finds that such use is not a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii) since Respondent presumably receives pay-per-click referral fees from the links on its website. Thus, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name based on the two prongs of the Policy in ¶¶ 4(c)(i) and (iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Further, there is no available evidence that Respondent is
commonly known by the <wwwwebsteronline.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Drop One- Buy/Sell/Lease and Snapping Services,” a name
unrelated to the disputed domain name.
Complainant asserts that Respondent is not sponsored by or affiliated
with Complainant and does not have authorization from Complainant to use
Complainant’s mark in a domain name.
The Panel finds that the available evidence indicates that Respondent is
not commonly known by the disputed domain name and thus, lacks rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the
[<wwwmedline.com>] domain name and its similarity to Complainant’s
registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶
4(c)(ii) does not apply to Respondent.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links to third party websites, many of which are commercial websites in direct competition with Complainant. If an Internet user seeking Complainant’s genuine website at the <websteronline.com> domain name accidentally leaves out the period between the “www” prefix and the remainder of the domain name they will find themselves at Respondent’s website, instead of at Complainant’s genuine website. Once redirected to Respondent’s website, Internet users in need of banking or financial services may follow the links on Respondent’s website to one of Complainant’s competitors instead of seeking out Complainant’s genuine website, resulting in lost business for Complainant. Thus, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <wwwwebsteronline.com> domain name
is confusingly similar to Complainant’s WEBSTER mark. Internet users may easily find themselves redirected to
Respondent’s website if they accidentally leave out the period between the
“www” prefix and the rest of the domain name.
Once at Respondent’s website, Internet users may mistakenly believe that
Complainant somehow sponsors Respondent’s website. Respondent is profiting on Internet users confusion by posting
links to third-party websites on its website, from which it presumably receives
pay-per-click referral fees. The Panel
finds that such use is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwwebsteronline.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 7, 2006
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