Webster Financial Corporation and Webster Bank, National Association v. Tulip Trading Company
Claim Number: FA1712001762599
Complainant is Webster Financial Corporation and Webster Bank, National Association (collectively “Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webstwrbank.com>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2017; the Forum received payment on December 13, 2017.
On December 14, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <webstwrbank.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2018 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@webstwrbank.com. Also on December 15, 2017, 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 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant offers a wide range of banking and financial services, including online banking, checking account, and mortgage loan services. Complainant uses its WEBSTER BANK mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,012,979, registered Nov. 8, 2005).
2. Respondent’s <webstwrbank.com>[1] domain name is confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to an intentionally misspelled version of Complainant’s WEBSTER BANK mark.
3. Respondent does not have rights or legitimate interests in the <webstwrbank.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its WEBSTER BANK mark in any fashion, and Respondent is not commonly known by the domain name or any variation of the domain name.
4. Further, Respondent is not using the <webstwrbank.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users to Respondent’s website, which prompts users to download an extension that leads to spam advertising.
5. Respondent registered and is using the <webstwrbank.com> domain name in bad faith. Respondent disrupts Complainant’s business by intentionally diverting, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s WEBSTER BANK mark as to the source, sponsorship, affiliation, and endorsement of the services offered through links on Respondent’s website. Further, Respondent requires users to download spam advertising through the domain name.
6. Additionally, Respondent engages in typosquatting by intentionally misspelling Complainant’s mark. Finally, Respondent is presumed to have knowledge of Complainant’s WEBSTER BANK mark and reputation because Respondent’s domain name <webstwrbank.com> incorporates Complainant’s mark in its entirety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WEBSTER BANK mark. Respondent’s domain name is confusingly similar to Complainant’s WEBSTER BANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <webstwrbank.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association. Webster Bank, National Association is a federally-chartered national bank and a wholly-owned subsidiary of Webster Financial Corporation, with both Complainants headquartered in Connecticut. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
The Panel finds that there is a sufficient link between the two parties, such that each may proceed as a Complainant. They will be referred to herein collectively as “Complainant.”
Complainant registered its WEBSTER BANK mark with the USPTO (e.g. Reg. No. 3,012,979, registered Nov. 8, 2005). Registration of a mark with a trademark authority such as the USPTO sufficiently confers rights in a mark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Thus, Complainant has established rights in the WEBSTER BANK mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <webstwrbank.com> domain name is confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of Complainant’s WEBSTER BANK mark. The addition of a gTLD to a misspelled version of a mark does not negate confusing similarity between a mark and a domain name. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The misspelling alleged by Complainant is the replacement of the letter “e” in WEBSTER with the letter “w,” which is adjacent to the “e” on a standard keyboard. The Panel holds that Respondent’s <webstwrbank.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <webstwrbank.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have rights or legitimate interests in the <webstwrbank.com> domain name, as Complainant has not licensed or otherwise authorized Respondent to use its WEBSTER or WEBSTER BANK mark in any fashion, and Respondent is not commonly known by the disputed domain name. WHOIS information may be used to prove that a respondent is commonly known by a 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). In addition to the WHOIS information of record, a Panel may also find that a respondent is not commonly known by a domain name where the respondent fails to provide affirmative evidence of being commonly known by the domain name. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the WHOIS information of record identifies Respondent as “Tulip Trading Company / Tulip Trading Company.” Accordingly, the Panel holds that Respondent is not commonly known by the <webstwrbank.com> domain name per Policy ¶ 4(c)(ii).
Further, Complainant has provided evidence that Respondent is not using the <webstwrbank.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to divert Internet users to Respondent’s website, which prompts users to download an extension that leads to spam advertising. Use of a domain name to divert Internet users to a respondent’s website for commercial gain may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use). Complainant provides screenshots of the <webstwrbank.com> domain name’s resolving website, which appears to show that users are prompted to download an extension that leads to spam advertising. Therefore, the Panel holds that Respondent is not using the domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <webstwrbank.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit by offering links on the resolving website. The Panel agrees. Using a domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can show bad faith under Policy ¶¶ 4(b)(iii) & (iv). 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).”); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of the message displayed on the screen when attempting to access Respondent’s website, which says “Add ‘Safe Browser Pro’?” and prompts users to click the “Add extension” button. Complainant argues that Respondent presumably benefits from users clicking the link to add the extension. The Panel agrees that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant contends that by replacing the letter “e” from the WEBSTER mark with the letter “w,” Respondent engages in typosquatting. A finding of typosquatting can show bad faith under Policy ¶ 4(a)(iii). 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).”). Thus, the Panel agrees that Respondent’s substitution of a letter in Complainant’s mark constitutes typosquatting and is further evidence of bad faith by Respondent.
Finally, Complainant claims that Respondent had knowledge of Complainant’s WEBSTER BANK mark at the time of registering the <webstwrbank.com> domain name. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the domain name which is further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent had knowledge of Complainant’s WEBSTER BANK mark and reputation because Respondent’s domain name <webstwrbank.com> incorporates Complainant’s mark in its entirety. The Panel agrees and finds this further evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webstwrbank.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 12, 2018
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