Webster Financial Corporation and Webster Bank, National Association v. Breanna Webster / Webster Financial LLC
Claim Number: FA2202001985617
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 Breanna Webster / Webster Financial LLC (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mywebsterfinancial.com>, registered with IONOS SE.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on February 23, 2022. The Forum received payment on February 23, 2022.
On February 25, 2022, IONOS SE confirmed by e-mail to the Forum that the <mywebsterfinancial.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@mywebsterfinancial.com. Also on February 28, 2022, 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 28, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
Preliminary Issue: Multiple Complainants
There are two Complainants in this proceeding: Webster Financial Corporation and Webster Bank, National Association. The evidence before the Panel shows that Webster Financial Corporation is the registrant of the WEBSTER trademark and that both Webster Financial Corporation and Webster Bank, National Association have used the mark continuously in commerce since 1995.
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 Panel accepts that the parent/subsidiary relationship between Complainants and their history of use of the WEBSTER trademark constitute a sufficient nexus or link such that each may claim to have rights to the <mywebsterfinancial.com> domain name listed in the Complaint.
A. Complainants
Complainants offers a wide range of banking and financial services. Complainants have rights in the WEBSTER mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <mywebsterfinancial.com> domain name is confusingly similar to Complainants’ WEBSTER mark. Respondent incorporates the mark in its entirety adding the terms “my” and “financial” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights in the <mywebsterfinancial.com> domain name as Complainants are unaware of any evidence that Respondent has ever commonly been known by the name “My Webster Financial” (or variations thereof) prior to Respondent’s registration of the <mywebsterfinancial.com> domain name. Nor did Complainants authorize Respondent to use the WEBSTER mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass herself off as Complainants by offering links to competing services.
Respondent registered and used the <mywebsterfinancial.com> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers pay-per-click links to services competitive with Complainants’ business. Respondent had actual knowledge of Complainants’ rights in the WEBSTER mark due to their longstanding use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have established all the elements entitling them to relief.
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 a 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 Complainants’ 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainants have shown that Webster Financial Corporation has rights in the WEBSTER mark through registrations of the mark with the USPTO (e.g. Reg. No. 3,334,635, registered on November 13, 2007. The Panel finds Respondent’s <mywebsterfinancial.com> domain name to be confusingly similar to the WEBSTER mark because it incorporates the mark in its entirety, adding the terms “my” and “financial”, which are insufficient to distinguish the domain name from the mark, along with the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainants have established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <mywebsterfinancial.com> domain name was registered on October 4, 2019, many years after the registration of the WEBSTER mark, which Complainants have shown had become very well-known. It resolves to a website with pay-per-click links to services that compete with Complainants’ business.
These circumstances, together with Complainants’ assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that she does have rights or legitimate interests in the <mywebsterfinancial.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
In particular, Respondent has provided no evidence that she has ever commonly been known by the name “My Webster Financial” (or variations thereof) prior to her registration of the <mywebsterfinancial.com> domain name. See AAA Employment, Inc., v. Ahearn and Assoc., FA0507000520670, p. 6 (Forum Sept. 6, 2005) (“[i]t must be shown by evidence that Respondent was commonly known by the domain name at the time of registration of the domain name.”); Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works, FA0304000155461, p. 4 (Forum June 17, 2003) (finding that UDRP Policy ¶ 4(c)(ii) was not satisfied where there was no evidence that respondent was commonly known by the <shantiyogaworks.com> domain name prior to its registration of the disputed domain name).
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainants have established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ very well-known WEBSTER mark when Respondent registered the <mywebsterfinancial.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainants’ mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainants have established this element.
DECISION
Complainants having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mywebsterfinancial.com> domain name be TRANSFERRED from Respondent to Complainant Webster Financial Corporation.
Alan L. Limbury, Panelist
Dated: March 30, 2022
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