Webster Financial Corporation and Webster Bank, National Association v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1806001792378
Complainant is Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterbsnk.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 19, 2018; the Forum received payment June 19, 2018.
On June 19, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <websterbsnk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@websterbsnk.com. Also on June 20, 2018, 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 July 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
The Panel also finds as a matter of procedure that although Complainant appears to be a dual entity, the Panel finds sufficient nexus between them for the Panel to reach the merits of the case, finding that the two entities are one and styled herein as “Complainant”.
Complainant requests that the domain name be transferred from Respondent to Complainant.
(a) Complainant’s Contentions in this Proceeding:
Complainant registered the WEBSTER and WEBSTER BANK marks with the United States Patent and Trademark Office (“USPTO”) (e.g. WEBSTER—Reg. No. 3,334,639, registered Nov. 13, 2007; WEBSTER BANK—Reg. No. 3,012,979, registered Nov. 8, 2005). See Compl. Ex. 1. Respondent’s <websterbsnk.com> domain name is confusingly similar to Complainant’s marks as it incorporates both WEBSTER and WEBSTER BANK, with an intentional misspelling of “bank,” plus the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <websterbsnk.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant did not authorize, license, or otherwise permit Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to various websites including competitors of Complainant and to websites that require users to download software, for Respondent’s presumed attempted commercial gain. See Compl. Ex. 10.
Respondent registered and uses the <websterbsnk.com> domain name in bad faith. Respondent disrupts Complainant’s business by redirecting users, for Respondent’s presumed commercial gain, to a webpage containing links to Competitors of Complainant as well as links requiring software downloads. See Compl. Ex. 10. Respondent registered the disputed domain name in an attempt to typosquat. Respondent had actual knowledge of Complainant’s rights in the WEBSTER and WEBSTER BANK marks prior to registration of the disputed domain name.
(b) Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the <websterbsnk.com> domain name May 4, 2018, some eleven years after Complainant establishes its rights.
Complainant established its rights and legitimate interests in its family of marks related to the Webster entities.
Respondent has no such rights or legitimate interests in the Webster entities, their marks, or the domain name that Respondent registered that contains the Webster mark in its entirety.
Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and the disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and uses the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant established rights in the WEBSTER and WEBSTER BANK marks based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently shows a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark . . . “. Given Complainant’s attached USPTO registration on the principal register at Exhibit 1, along with Complainant’s submission of screenshot evidence of the registrations for the WEBSTER and WEBSTER BANK marks (e.g. WEBSTER—Reg. No. 3,334,639, registered Nov. 13, 2007; WEBSTER BANK—Reg. No. 3,012,979, registered Nov. 8, 2005) this Panel finds that Complainant established rights in the WEBSTER and WEBSTER BANK marks. See Compl. Ex. 1.
Next, Complainant argues that Respondent’s <websterbsnk.com> domain name is confusingly similar to Complainant’s mark as it incorporates both WEBSTER and WEBSTER BANK, with an intentional misspelling of “bank,” plus the “.com” gTLD. Such additions to a mark do not distinguish a domain name for the purposes of Policy ¶4(a)(i). See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the <websterbsnk.com> domain name is confusingly similar to the WEBSTER and WEBSTER BANK marks under Policy ¶4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name that uses Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <websterbsnk.com> domain name. Where Respondent files no response, Panels consider such relevant information as the WHOIS and other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record identifies “Carolina Rodrigues / Fundacion Comercio Eletronico” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the WEBSTER and WEBSTER BANK marks. Panels use these assertions as evidence that a party lacks rights or legitimate interests. 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 alleges that Respondent never was legitimately affiliated with Complainant, was never known by the disputed domain name prior to its registration, and that Complainant did not give Respondent permission to use the disputed domain name.
Accordingly, the Panel finds that Respondent is not commonly known by the <websterbsnk.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent hosts links both related and unrelated to Complainant, for Respondent’s presumed commercial gain. Use of a complainant’s mark to host links both related and unrelated to a complainant in order for a respondent to gain commercially is not a bona fide use under a Policy ¶ 4(c)(i) analysis ant it is not a noncommercial or otherwise fair use under Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant submits screenshot evidence of the resolving website for the <websterbsnk.com> domain name, which shows the related and unrelated hyperlinks. See Compl. Ex. 10. The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends Respondent disrupts Complainant’s business by redirecting users, for Respondent’s presumed commercial gain, to a webpage containing links to Competitors of Complainant as well as to links requiring software downloads. Use of a disputed domain name to trade off on a complainant’s notoriety for a respondent’s commercial gain by pay-per-click hyperlinks related and unrelated to a complainant’s business supports findings of bad faith under a Policy ¶ 4(b)(iii) & (iv) analysis. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant submits screenshot evidence of the resolving website of the disputed domain name, which shows numerous hyperlinks from which Respondent allegedly seeks commercial gains. See Compl. Ex. 10. The Panel finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii) & (iv).
Next, Complainant contends that Respondent registered and uses the <websterbsnk.com> domain name in bad faith by engaging in typosquatting. A finding of typosquatting evidences 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).”). Complainant alleges that Respondent registered an intentional misspelling of Complainant’s WEBSTER BANK mark to capitalize on the confusion of Internet users. The Panel finds that evidence of typosquatting by Respondent constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant claims that Respondent had actual notice or constructive knowledge of Complainant’s WEBSTER and WEBSTER BANK marks. The Panel disregards arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge; however, actual knowledge is sufficient for a finding of bad faith pursuant to Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the WEBSTER and WEBSTER BANK marks based upon Respondent’s incorporation of an intentionally misspelled version of Complainant’s WEBSTER BANK mark into the disputed domain name. The Panel agrees with Complainant; the fact that Respondent misspelled the supporting word but left the primary part of the mark intact and the use made attempting to exploit Complainant’s commercial area permits the Panel to find actual knowledge by Respondent and the Panel so finds: Respondent had actual knowledge of Complainant’s rights in its protected mark when Respondent registered the confusingly similar <websterbsnk.com> domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name containing in its entirety Complainant’s protect mark in bad faith; Complainant satisfied the elements of ICANN 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 <websterbsnk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 25, 2018
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