Webster Financial Corporation v. Anton Semenov / Home
Claim Number: FA1602001661226
Complainant is Webster Financial Corporation (“Complainant”), represented by Diane Duhaime of Carlton Fields Jorden Burt, P.A., Connecticut, USA. Respondent is Anton Semenov / Home (“Respondent”), Uzbekistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hsabank-com.com>, registered with Name.com, Inc.
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 17, 2016; the Forum received payment on February 17, 2016.
On February 22, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <hsabank-com.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 February 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@hsabank-com.com. Also on February 23, 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 March 21, 2016, 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
Complainant uses the HSA BANK and HSA BANK OWN YOUR HEALTH marks with its financial business providing business and consumer banking, mortgage, insurance, trust, investment and other financial services. Complainant has registered the HSA BANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3161483, registered October 24, 2006), which demonstrates rights in the mark. Complainant has also registered HSA BANK OWN YOUR HEALTH with the USPTO (e.g., Reg. No. 86373090, registered August, 21, 2014), which demonstrates rights in that mark. Respondent’s <hsabank-com.com> domain name is confusingly similar to the HSA BANK mark as it incorporates the mark in its entirety while eliminating the spacing between words, adding the word “-com” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <hsabank-com.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant ever authorized Respondent to register or use the HSA BANK mark in any manner. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <hsabank-com.com> domain name. Rather, the domain name resolves to a website containing links for health savings account services in direct competition with those offered by Complainant.
Respondent is using the <hsabank-com.com> domain name in bad faith. Respondent has more than 100 NAF and WIPO arbitration decisions against the Respondent in which the domain names were subsequently transferred under the UDRP. In addition, Respondent is using a privacy shield. 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, and that confusion presumably resulting in profit. Further, Respondent has taken advantage of typosquatting to mislead Internet users. Lastly, Respondent had actual knowledge of the HSA BANK mark and Complainant’s rights therein because of the inclusion of the mark in its entirety in the disputed domain name.
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 domestic registrations for the marks HSA BANK and HSA BANK OWN YOUR HEALTH, which it has continuously used since at least as early as 2006 and 2014 respectively in connection with its provision of numerous financial and banking goods and services.
Respondent is Anton Semenov / Home of Tashkent, Uzbekistan. Respondent’s registrar’s address is listed as Denver, CO, USA. The Panel notes that the <hsabank-com.com> domain name was registered on or about November 6, 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 (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 uses the HSA BANK and HSA BANK OWN YOUR HEALTH marks with its financial business providing business and consumer banking, mortgage, insurance, trust, investment and other financial services. Complainant registered the HSA BANK mark with the USPTO (Reg. No. 3161483, registered Oct. 24, 2006). Complainant also registered HSA BANK OWN YOUR HEALTH with the USPTO (e.g., Reg. No. 86373090, registered August, 21, 2014) and contends that the registrations demonstrate rights in the marks, even though Respondent operates in a different country. Prior panels have found that a complainant need not register its trademark in the same country as that in which the respondent operates in order to have a valid claim under the UDRP. See Koninklijike KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel here finds that Complainant’s USPTO registrations are sufficient to show rights under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that Respondent’s <hsabank-com.com> domain name is confusingly similar to the HSA BANK mark as it incorporates the mark in its entirety while eliminating the spacing between words, and adding the “.com” gTLD and the ending “-com”. Past panels have found such alterations to a mark insufficient to overcome a finding of confusing similarity under Policy ¶4(a)(i). See DIRECTTV, Inc. v. SEO KINGPIN, FA 956507 (Nat. Arb. Forum May 29, 2007) (finding <direct-tv-com.com> confusingly similar to Complainant’s DIRECTV mark). The Panel here finds that Respondent’s <hsabank-com.com> domain name is confusingly similar to the HSA BANK mark under Policy ¶4(a)(i).
Respondent makes no contentions with regards to 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 argues that Respondent has no rights or legitimate interests in the <hsabank-com.com> domain name. Complainant asserts that the Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name, list “Anton Semenov/Home” as the registrant of record. The Panel also notes that Respondent failed to submit a response in this proceeding. In light of the evidence available, this Panel finds there is no basis to conclude that Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name.
Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <hsabank-com.com> domain name. Rather, Complainant contends that the domain name resolves to a website containing hyperlinks which purportedly resolve to direct competitors of Complainant and from which Respondent presumably nets pay-per-click profits. Previous panels have found such use by a respondent to evince neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel here finds that Respondent’s <hsabank-com.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
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 argues that Respondent registered and used the <hsabank-com.com> domain name in bad faith. Complainant asserts that Respondent has over 100 adverse UDRP findings. Complainant cites to the following cases: Bare Escentuals Beauty, Inc. v. Ryan G Foo / PPA Media Services, FA 157735; Vera Bradley, Inc. v. PPA Media Services / Ryan G Foo, FA 1516883. Panels have found that a history of adverse UDRP decisions can indicate bad faith in a current case. 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).”). However, the Respondent(s) in the cases Complainant cites above appear to be different than the Respondent in the instant proceeding. Accordingly this Panel finds the evidence insufficient to find bad faith based on the Respondent’s alleged past UDRP decisions under Policy ¶4(b)(ii).
Complainant argues that Respondent has attempted to attract Internet users for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website through their misleading domain name. The Panel notes that Respondent’s domain name directs Internet users to a webpage containing messages that read “HSA Health Plans,” “Medicare and HSA Accounts,” and “Health Savings Account HSA”. Prior panels have found that the use of a domain name in such a manner can amount to bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). The Panel here finds that Respondent’s actions have created a likelihood of confusion for profit, and therefore establishes bad faith registration and use under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As 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 <hsabank-com.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 4, 2016
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