Webster Financial Corporation and Webster Bank, National Association v. George Washere
Claim Number: FA1902001830597
Complainants are Webster Financial Corporation and Webster Bank, National Association (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia, USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websteronlione.com>, registered with Enom, 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.
Bruce E. Meyerson as Panelist.
Complainants submitted a Complaint to the Forum electronically on February 20, 2019; the Forum received payment on February 20, 2019.
On February 21, 2019, Enom, Inc. confirmed by e-mail to the Forum that the <websteronlione.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2019 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@websteronlione.com. Also on February 22, 2019, 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 15, 2019, pursuant to Complainants’ 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.
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association. Complainant Webster Bank, National Association is a wholly-owned subsidiary of Webster Financial Corporation.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.” 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 there is a sufficient nexus between these entities such that they may proceed in this matter as one party and will be referred to as “Complainant.”
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 has rights in the WEBSTER (e.g. Reg. No. 3,334,639, registered Nov. 13, 2007) and WEBSTERONLINE.COM (e.g. Reg. No. 3,409,243, registered Apr. 8, 2008) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). Respondent’s <websteronlione.com>[i] domain name is identical or confusingly similar to Complainant’s WEBSTERONLINE.COM mark as it contains an intentional misspelling by adding the letter “o” between the letters “i" and “n.”
2. Respondent has no rights or legitimate interests in the <websteronlione.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark.
3. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name redirects users to various websites that have no affiliation with Complainant.
4. Respondent registered and uses the <websteronlione.com> domain name in bad faith. Respondent intentionally attempts to disrupt and divert, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s WEBSTER marks as to the source, sponsorship, affiliation, and endorsement of the services offered on the Respondent’s website.
5. Further, Respondent engaged in typosquatting by intentionally misspelling the mark within the domain name.
6. Additionally, Respondent registered the domain name using a privacy service.
7. Moreover, Respondent had actual or constructive knowledge of Complainant’s rights in the WEBSTER marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WEBSTER and WEBSTERONLINE.COM marks. Respondent’s domain name is confusingly similar to Complainant’s WEBSTER and WEBSTERONLINE.COM marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <websteronlione.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.”).
Complainant has rights in the WEBSTER (e.g. Reg. No. 3,334,639, registered Nov. 13, 2007) and WEBSTERONLINE.COM (e.g. Reg. No. 3,409,243, registered Apr. 8, 2008) marks through its registration of the marks with the USPTO. Registration of a mark with the USPTO sufficiently confers 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). Accordingly, Complainant has established rights in the WEBSTER and WEBSTERONLINE.COM marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <websteronlione.com> domain name is identical or confusingly similar to Complainant’s WEBSTERONLINE.COM mark as it contains an intentional misspelling by adding the letter “o” between the letters “i" and “n.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The Panel holds that the <websteronlione.com> domain name is confusingly similar to the WEBSTERONLINE.COM 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 <websteronlione.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 has no rights or legitimate interests in the <websteronlione.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “George Washere” as the registrant. Complainant further asserts that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the WEBSTERONLINE.COM mark in any manner. Accordingly, the Panel may agree that Respondent is not commonly known by the <websteronlione.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the <websteronlione.com> domain name to redirect users to various websites that have no affiliation with Complainant. Using a confusingly similar domain incorporating the mark of another to redirect users to services unrelated to those offered by a complainant shows a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides screenshots of the various resolving webpages, which resolve to the URLs <realtor.com> and <apartments.com>. As such, the Panel holds that Respondent’s use of the <websteronlione.com> domain name to promote unrelated services fails to amount to any bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent intentionally attempts to trade off the goodwill associated with a complainant’s mark for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As mentioned above, Complainant provides screenshots of the various resolving webpages, which resolve to the URLs <realtor.com> and <apartments.com>. Accordingly, the Panel holds that Respondent disrupts Complainant’s business and attempts to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Next, Complainant argues that Respondent engaged in typosquatting by intentionally misspelling the mark within the domain name. 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). Here, Respondent added the letter “o” after the letter “i" in the WEBSTERONLINE.COM mark, which is the only difference between the domain name and the mark. Thus, Respondent’s changes of Complainant’s mark in the domain name further demonstrate Respondent’s bad faith.
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the WEBSTERONLINE.COM mark at the time of registering the <websteronlione.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name shows 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). That Panel agrees that Respondent had actual knowledge of Complainant’s mark, demonstrating 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 <websteronlione.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 29, 2019
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