Webster Financial Corporation and Webster Bank, National Association v. Web Ster
Claim Number: FA2303002035953
Complainants are Webster Financial Corporation and Webster Bank, National Association (“Complainants”), represented by Gail Podolsky of Carlton Fields, P.A., Georgia, USA. Respondent is Web Ster (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <websterb.online>, registered with NameCheap, Inc.
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 Forum electronically on March 15, 2023. Forum received payment on March 15, 2023.
On March 16, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <websterb.online> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2023 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@websterb.online. Also on March 16, 2023, 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 April 8, 2023, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Webster Financial Corporation and Webster Bank, National Association, a wholly owned subsidiary of Webster Financial Corporation. 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.”
The Panel accepts that the parent/subsidiary relationship between Complainants and their history of use of the WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM trademarks constitutes a sufficient nexus or link such that each may claim to have rights to the <websterb.online> domain name listed in the Complaint.
A. Complainants
Complainants have rights in the WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM marks based upon registrations with the United States Patent and Trademark Office (“USPTO”). Respondent’s <websterb.online> domain name is confusingly similar to Complainants’ marks.
Respondent does not have rights or legitimate interests in the <websterb.online> domain name. Respondent is not licensed or authorized to use Complainants’ WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM marks and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name intentionally to divert users to its own webpage.
Respondent registered and uses the <websterb.online> domain name in bad faith. Upon information and belief, Respondent’s website located at <websterb.online> brings users to a bank purportedly named “Web Ster Bank.” Complainants are unaware of any such bank and did not find any evidence that this alleged bank had a federal or state charter, obtained FDIC approval, or met any of the statutory or regulatory requirements to be a bank. Using a virtually identical website to advertise the same banking services as Complainants is highly likely to lead consumers to believe it is a website sponsored by or affiliated with Complainants’ website. Additionally, Respondent’s use of a privacy service indicates bad faith. Also, Respondent’s registration and use of the <websterb.online> domain name constitutes typosquatting. Furthermore, Respondent had constructive and actual knowledge of Complainant’s rights in the WEBSTER and WEBSTERONLINE.COM marks based on the incorporation of the entire WEBSTER mark in the domain name.
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 Complainants 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 Complainants have 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”).
Identical and/or Confusingly Similar
Complainant Webster Financial Corporation has shown that it has rights in the WEBSTER, WEBSTER BANK and WEBSTERONLINE.COM marks based upon registrations with the USPTO (e.g., WEBSTER, Reg. No. 3,334,639, registered on November 13, 2007, WEBSTER BANK, Reg. No. 3,012,979, registered on November 8, 2005, and WEBSTERONLINE.COM, Reg. No. 3,409,243, registered on April 8, 2008). As a wholly owned subsidiary of Webster Financial Corporation, Webster Bank, National Association also has rights in those marks as a licensee.
The Panel finds Respondent’s <websterb.online> domain name to be confusingly similar to each of Complainants’ marks. It contains the entirety of the WEBSTER mark, merely adding the letter “b”. It omits the word “BANK” from the WEBSTER BANK mark, substituting the letter “b”. It adds the letter “b” to the WEBSTERONLINE.COM mark and omits the word “.COM”. These differences are insufficient to distinguish the domain name from any of the marks. The inconsequential generic top-level domain (“gTLD”) “.online” may be ignored under this element.
Complainants have established this element.
Rights or Legitimate Interests
(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 <websterb.online> domain name was registered on January 28, 2023, many years after the registration of Complainants’ marks, which Complainants have shown have become very well-known. The domain name presently resolves to a webpage warning:
“Deceptive site ahead
Attackers on websterb.online may trick you into doing something dangerous like installing software or revealing your personal information (for example, passwords, phone numbers, or credit cards)…”
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 it does have rights or legitimate interests in the <websterb.online> 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.
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, WEBSTER BANK and WEBSTERONLINE.COM marks when Respondent registered the <websterb.online> domain name, which is clearly a deliberately typosquatted version of Complainants’ marks. There is no plausible explanation for the registration of the domain name other than to take advantage of the goodwill of Complainants. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, Case No. D2000-0777 (WIPO Oct. 2, 2000).
Typosquatting is independent evidence of bad faith registration and use of a domain name per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1623825 (Forum July 20, 2015).
Further, although the content of Respondent’s website is unavailable because of the warning webpage, the Panel is satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s 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 <websterb.online> domain name be TRANSFERRED from Respondent to Complainant Webster Financial Corporation.
Alan L. Limbury, Panelist
Dated: April 10, 2023
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