Webster Financial Corporation v. Donin Y Ivan
Claim Number: FA2211002022322
Complainant is Webster Financial Corporation (“Complainant”), represented by Gail Podolsky of Carlton Fields Jorden Burt, P.A., Georgia. Respondent is Donin Y Ivan (“Respondent”), RU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myaccount-hsabank.com>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on November 30, 2022; Forum received payment on November 30, 2022.
On Dec 2, 2022, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to Forum that the <myaccount-hsabank.com> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the names. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@myaccount-hsabank.com. Also on December 5, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is reasonably conversant and proficient in the English language and that going forward in Russian would place an unjust burden on Complainant. Therefore, after considering the circumstances of the present case including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Webster Financial Corporation, uses its HSA BANK mark in connection with business and consumer banking, mortgage, insurance, trust, investment and other financial services.
Complainant claims rights in the HSA BANK mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <myaccount-hsabank.com> domain name is confusingly similar to Complainant’s HSA BANK mark as it incorporates the mark in whole and adds the descriptive terms “my” and “account” , as well as the “.com” generic top-level domain (“gTLD”), to form the domain name.
Respondent lacks rights and legitimate interests in the <myaccount-hsabank.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed to Respondent any rights in the HSA BANK mark. Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Rather, Respondent is using the domain name in furtherance of illegal activity, including phishing.
Respondent registered and uses the <myaccount-hsabank.com> domain name in bad faith. Respondent uses the confusingly similar nature of the at-issue domain name in order to attract users with a false impression of association with Complainant for commercial gain. Respondent uses the at-issue domain name to phish for users’ account information. Respondent registered and uses the domain name with actual or constructive knowledge of Complainant’s rights in the HSA BANK mark. Respondent used a privacy shield when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the HSA BANK trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in HSA BANK trademark.
Respondent uses the at-issue domain name to pass off as Complainant via email and perpetuate fraud.
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 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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the HSA BANK mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <myaccount-hsabank.com> domain name contain Complainant’s HSA BANK trademark less its domain name impermissible space, prefixed by the generic term or terms “myaccount” and a hyphen, and with all followed by the “.com” top-level domain name. The differences between the at-issue domain name and Complainant’s HSA BANK trademark are insufficient to distinguish the at-issue domain name from HSA BANK for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <myaccount-hsabank.com> domain name is confusingly similar to Complainant’s HSA BANK trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <myaccount-hsabank.com> shows that “Donin Y Ivan” is the at-issue domain name’s registrant and there is no evidence in the record indicating that Respondent is known by the <myaccount-hsabank.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent uses the at-issue domain name to host email in furtherance of passing off as Complainant so that it may perpetuate a phishing scheme or schemes whereby Complainant’s customers and potential customers are deceived into sharing their account information with Respondent, or turning over funds to Respondent, or are otherwise defrauded by Respondent in any of a number of ways. Respondent’s use of the at-issue domain name to perpetrate fraud is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that repsondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <myaccount-hsabank.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses <myaccount-hsabank.com> promote the false impression that the domain name and its associated email are sponsored by Complainant. Doing so is disruptive to Complainant’s business and deceives third parties into falsely believing there is an affiliation between the domain name and Complainant. Such use of the domain name indicates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Next and as mentioned above regarding rights and legitimate interests, Respondent’s uses the domain name to perpetuate an email phishing scheme(s) aimed at defrauding Complainant’s customers and potential customers. Thereby, Respondent further demonstrates its bad faith registration and use of the at-issue domain name. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)); see also, Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).
Moreover, Respondent registered the <myaccount-hsabank.com> domain name knowing that Complainant had trademark rights in HSA BANK and thus in <myaccount-hsabank.com>. Respondent’s actual knowledge of Complainant’s rights in <myaccount-hsabank.com> is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to pass itself off as Complainant via email in furtherance of fraud. Respondent’s registration of <myaccount-hsabank.com> while having knowledge of Complainant’s trademark rights in HSA BANK shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed the disputed domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myaccount-hsabank.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 31, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page